`
`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
`Alexandria1 Virginia 22313- 1450
`www.uspto.gov
`
`APPLICATION NO.
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`
`
`
`
` F ING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`
`
`
`
`CONF {MATION NO.
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`13/444,923
`
`04/12/2012
`
`Yosuke MIZUYAMA
`
`AOYB—43 1US
`
`5509
`
`EXAMINER
`RATNERPRESTIA —
`”6’20” —
`7590
`52473
`PO BOX 980
`LAMBRIGHT, BETHANY s
`VALLEY FORGE, PA 19482-0980
`
`PAPER NUMBER
`
`ART UNIT
`
`1755
`
`
`
`
`NOT *ICATION DATE
`
`DELIVERY MODE
`
`01/16/2014
`
`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):
`
`ptocorrespondence @ratnerprestia.c0m
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`Applicant(s)
`Application No.
` 13/444,923 MIZUYAMA, YOSUKE
`
`Examiner
`Art Unit
`AIA (First Inventor to File)
`Office Action Summary
`
`1755BETHANY LAMBRIGHT [SENS
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3_ MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`In no event however may a reply be timely filed
`after SIX () MONTHS from 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) MONTHS from 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, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1 .704(b).
`
`Status
`
`1)|:I Responsive to communication(s) filed on
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b)|ZI This action is non-final.
`a)|:l This action is FINAL.
`3)IZI An election was made by the applicant in response to a restriction requirement set forth during the interview on
`19 April 2013; the restriction requirement and election have been incorporated into this action.
`
`4)|:| Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims
`
`5)IZI Claim(s) 1-24 is/are pending in the application.
`5a) Of the above claim(s) 1-8 and 19-24 is/are withdrawn from consideration.
`
`is/are allowed.
`6)I:I Claim(s)
`7)|Z| CIaim(s)_9-18 Is/are rejected.
`8)|:I Claim(s)_ is/are objected to.
`
`
`are subject to restriction and/or election requirement.
`9)I:I Claim((s)
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`htt
`:/'I’\WIIW.tIscto. ovI’ atentS/init events/
`
`
`
`hI/index.‘s or send an inquiry to PPI-tfeedback{®usgtc.00v.
`
`Application Papers
`
`10)I:l The specification is objected to by the Examiner.
`11)|X| The drawing(s) filed on 12 April 2012is/are: a)|Z| 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)I:| Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)I:l All
`
`b)|:l Some * c)I:l None of the:
`
`1.I:I Certified copies of the priority documents have been received.
`2.|:l Certified copies of the priority documents have been received in Application No.
`3.|:| Copies of the certified copies of the priority documents have been received in 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.
`
`Interim copies:
`
`a)|:l All
`
`b)I:I Some
`
`c)I:I None of the:
`
`Interim copies of the priority documents have been received.
`
`Attachment(s)
`
`1) E Notice of References Cited (PTO-892)
`
`3) D Interview Summary (PTO-413)
`
`Paper N°ISI/Ma" Date' —
`PTO/SB/08
`t
`t
`St
`I
`D'
`t'
`f
`2 IZI I
`)
`4) I:I Other:
`a emen (s) (
`Isc osure
`n orma Ion
`)
`Paper No(s)/Mai| Date
`U.S. Patent and Trademark Office
`PTOL—326 (Rev. 03-13)
`
`Part of Paper No./Mai| Date 20130424
`
`Office Action Summary
`
`

`

`Application/Control Number: 13/444,923
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`Page 2
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`Art Unit: 1755
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`DETAILED ACTION
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`This action is in response to a 371 application filed April 12, 2012 as the national
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`stage application of PCT/JP2011/073760 filed on October 7, 2011 with benefit of US
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`provisional application 61418545 filed December 1, 2010. Claims 1-24 are pending and
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`under examination.
`
`Election/Restrictions
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`Restriction is required under 35 U.S.C. 121 and 372.
`
`This application contains the following inventions or groups of inventions which
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`are not so linked as to form a single general inventive concept under PCT Rule 13.1.
`
`In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to
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`elect a single invention to which the claims must be restricted.
`
`Group |, claim(s) 1-8, drawn to an optical element.
`
`Group II, claim(s) 9-18, drawn to a concentrating photovoltaic device.
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`Group III, claim(s) 19-24, drawn to a method of forming an optical element.
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`

`

`Application/Control Number: 13/444,923
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`Page 3
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`Art Unit: 1755
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`The groups of inventions listed above do not relate to a single general inventive
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`concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or
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`corresponding special technical features for the following reasons:
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`Groups l-lll lack unity of invention because even though the inventions of these
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`groups require the technical feature of a concentrating lens comprising a first surface
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`comprising a Fresnel lens, this technical feature is not a special technical feature as it
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`does not make a contribution over the prior art in view of US 4653472, which discloses
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`a Fresnel lens concentrator which focuses radiant energy on a solar target (Fig. 3).
`
`During a telephone conversation with Lawrence Ashery on April 19, 2013 a
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`provisional election was made without traverse to prosecute the invention of Group II,
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`claims 9-18. Affirmation of this election must be made by applicant in replying to this
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`Office action. Claim1-8 and 19—24 are withdrawn from further consideration by the
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`examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
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`The examiner has required restriction between product or apparatus claims and
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`process claims. Where applicant elects claims directed to the product/apparatus, and all
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`product/apparatus claims are subsequently found allowable, withdrawn process claims
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`that include all the limitations of the allowable product/apparatus claims should be
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`considered for rejoinder. All claims directed to a nonelected process invention must
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`

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`Application/Control Number: 13/444,923
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`Page 4
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`Art Unit: 1755
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`include all the limitations of an allowable product/apparatus claim for that process
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`invention to be rejoined.
`
`In the event of rejoinder, the requirement for restriction between the
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`product/apparatus claims and the rejoined process claims will be withdrawn, and the
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`rejoined process claims will be fully examined for patentability in accordance with 37
`
`CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for
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`patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all
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`claims to the elected product/apparatus are found allowable, an otherwise proper
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`restriction requirement between product/apparatus claims and process claims may be
`
`maintained. Withdrawn process claims that are not commensurate in scope with an
`
`allowable product/apparatus claim will not be rejoined. See MPEP § 821.04.
`
`Additionally, in order for rejoinder to occur, applicant is advised that the process claims
`
`should be amended during prosecution to require the limitations of the
`
`product/apparatus claims. Failure to do so may result in no rejoinder. Further, note
`
`that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply
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`where the restriction requirement is withdrawn by the examiner before the patent
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`issues. See MPEP § 804.01.
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`

`

`Application/Control Number: 13/444,923
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`Page 5
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`Art Unit: 1755
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`Information Disclosure Statement
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`The information disclosure statement (IDS) submitted on April 20, 2012 has been
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`considered by the examiner.
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`Claim Rejections - 35 USC § 1 12
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`The following is a quotation of 35 U.S.C. 112(b):
`
`(B) CONCLUSION—The specification shall conclude with one or more claims
`particularly pointing out and distinctly claiming the subject matter which the inventor or a
`joint inventor regards as the invention.
`
`The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph:
`
`The specification shall conclude with one or more claims particularly pointing out and
`distinctly claiming the subject matter which the applicant regards as his invention.
`
`Claims 9-18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA),
`
`second paragraph, as being indefinite for failing to particularly point out and distinctly
`
`claim the subject matter which the inventor or a joint inventor, or for pre-AIA the
`
`applicant regards as the invention.
`
`Regarding Claim 9, the claim recites "the Fresnel lens having a height". It is
`
`unclear if "height" refers to the pitch of each facet of the Fresnel lens, the height of the
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`entire Fresnel lens structure of the height from the base of the Fresnel lens to the
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`

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`Application/Control Number: 13/444,923
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`Page 6
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`Art Unit: 1755
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`highest pitch. Examiner will assume any height of a Fresnel lens component will
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`correspond to the claimed "height".
`
`Claim 9 also recites “a diffraction efficiency of at least two different wavelengths
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`of the light passing through the concentrating lens is maximized”. However, it is unclear
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`what is meant by “maximized”, whether it be a range, an upper or lower limit, a set value
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`or threshold. Any efficiency of diffraction will be considered “maximized” for the
`
`purposes of examination.
`
`Claim 10 recites “the height of the Fresnel lens is configured to simultaneously
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`minimize an error in deviation from a maximum phase retardation" limitation). It is
`
`unclear what is meant by "minimized", whether it be a range, an upper or lower limit, a
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`set value or threshold. Any degree of phase retardation will be considered "minimized”
`
`for the purposes of examination.
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`Claims 11-18 are rejected as being dependent from Claim 9.
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`Claim Rejections - 35 USC § 103
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`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`(a) A patent may not be obtained though the invention is not identically disclosed or described as set
`forth in section 102 of this title, if the differences between the subject matter sought to be patented and
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`

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`Application/Control Number: 13/444,923
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`Page 7
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`Art Unit: 1755
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`the prior art are such that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said subject matter pertains.
`Patentability shall not be negatived by the manner in which the invention was made.
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`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148
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`USPQ 459 (1966), that are applied for establishing a background for determining
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`obviousness under 35 U.S.C. 103(a) are summarized as follows:
`
`99!“?
`
`Determining the scope and contents of the prior art.
`Ascertaining the differences between the prior art and the claims at issue.
`Resolving the level of ordinary skill in the pertinent art.
`Considering objective evidence present in the application indicating
`obviousness or nonobviousness.
`
`Claims 9 and 10 are rejected under 35 U.S.C. 103(a) as being unpatentable over
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`US 4653472 by Mori in view of US 20070147041 by Shiratsuchi et al (hereinafter
`
`Shiratsuchi).
`
`Regarding Claim 9, Mori discloses a light focusing lens which separates light
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`comprising a first and second surface (Numeral 10 Fig. 3 corresponding to the claimed
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`“at least one concentrating lens configured to receive light and to separate the light
`
`passing through the respective concentrating lens into a plurality of beamlets”
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`limitation). The first surface of the light focusing lens is a Fresnel lens (Numeral 11 Fig.
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`1 corresponding to the claimed “each concentrating lens comprising: a first surface
`
`having a Fresnel lens and a second surface opposite the first surface” limitation). The
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`Fresnel lens has a height (Numeral 11 Fig. 1) therefore, it inherently diffracts at least
`
`

`

`Application/Control Number: 13/444,923
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`Page 8
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`Art Unit: 1755
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`two wavelengths of light at some efficiency, corresponding to the claimed “the Fresnel
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`lens having a height, wherein at the height of the Fresnel lens a diffraction efficiency of
`
`at least two different wavelengths of the light passing through the concentrating lens is
`
`maximized” limitation). As disclosed previously in the rejection of Claim 9 under 112
`
`second paragraph, any amount of efficiency is considered “maximized” for the purpose
`
`of examination.
`
`Mori discloses a solar cell (Numeral 14 Fig. 3) which receive light from the
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`focusing lens (Fig. 3 corresponding to the claimed "and at least one PV cell
`
`corresponding to the at least one concentrating lens configured to receive the
`
`respective plurality of beamlets” limitation).
`
`Mori does not disclose "the second surface having a plurality of microlenses”.
`
`However, Shiratsuchi discloses a concentrating lens (Numeral 30 Fig. 1) which
`
`collimates and refracts light towards a target ([0065]). The first side, incident to light
`
`comprises a Fresnel lens (Numeral 31 Fig. 1) and the second side comprising a plurality
`
`of microlenses (Numeral 32 Fig. 1 corresponding to the claimed “the second surface
`
`having a plurality of microlenses” limitation) in order to collect light which has been
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`refracted and collimated by the Fresnel lens and focuses the light onto a target ([0065]).
`
`

`

`Application/Control Number: 13/444,923
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`Page 9
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`Art Unit: 1755
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`Therefore, it would have been obvious to one having ordinary skill in the art at
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`the time of the invention to employ a plurality of microlenses on the second side of
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`Mori’s focusing lens, as taught by Shiratsuchi, in order to collect light which has been
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`refracted and collimated by the Fresnel lens and focuses the light onto a target
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`(Shiratsuchi [0065]).
`
`Regarding Claim 10, modified Mori discloses the front surface of the focusing
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`lens comprises a Fresnel lens having a height (Mori Numeral 11 Fig. 3). At any height, a
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`Fresnel lens exhibits a degree of phase retardation, as supported by the instant
`
`specification [OO48]-[OO49], therefore, modified Mori's use of a Fresnel lens as the front
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`surface of a focusing lens reads on the claimed "wherein, for each concentrating lens,
`
`the height of the Fresnel lens is configured to simultaneously minimize an error in
`
`deviation from a maximum phase retardation for the at least two different wavelengths”
`
`limitation. As disclosed previously in the rejection of Claim 10 under 112 second
`
`paragraph, any degree of phase retardation is considered “minimized” for the purpose
`
`of examination.
`
`Regarding Claim 11, modified Mori discloses the solar cell absorbs light from the
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`focusing lens (Mori Column 2 Lines 65-67 and Column 3 Lines 1-7 corresponding to the
`
`claimed “wherein, for each concentrating lens, the at least two different wavelengths
`
`correspond to one or more wavelength absorption bands of the corresponding PV cell”
`
`limitation).
`
`

`

`Application/Control Number: 13/444,923
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`Page 10
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`Art Unit: 1755
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`Regarding Claim 12, modified Mori discloses the first side of the focusing lens
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`receives light (Mori Fig. 3 corresponding to the claimed "wherein each concentrating
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`lens is configured to receive the light via the first surface” limitation).
`
`Regarding Claim 13, modified Mori discloses the second side of the focusing lens
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`receives light from the first side (Shiratsuchi Fig. 1 [0065] corresponding to the claimed
`
`"wherein each concentrating lens is configured to receive the light via the second
`
`surface” limitation).
`
`Regarding Claim 15, modified Mori discloses the first side of the focusing lens is
`
`a Fresnel lens (Mori Numeral 11 Fig. 3). Light exiting the focusing lens converges to an
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`approximate focal point before diverging (Mori Fig. 3 corresponding to the claimed
`
`“wherein, for each concentrating lens, the Fresnel lens is configured to compensate for
`
`a dispersion by at least one of the first surface or the second surface” limitation).
`
`Regarding Claim 16, modified Mori discloses light exiting the focusing lens
`
`crosses path with light exiting the opposing side of the focusing lens, thereby striking
`
`the target at an opposite side from which it exits the focusing lens (Mori Fig. 3
`
`corresponding to the claimed “wherein, for each concentrating lens, the first surface is
`
`configured to superimpose the respective plurality of beamlets onto the corresponding
`
`PV cell” limitation).
`
`

`

`Application/Control Number: 13/444,923
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`Page 11
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`Art Unit: 1755
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`Regarding Claim 17, modified Mori discloses light exiting the focusing lens
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`converges to an approximate focal point between the lens and the solar cell (Mori Fig. 3
`
`and Shiratsuchi Fig. 1 corresponding to the claimed "wherein, for each concentrating
`
`lens, the first surface is configured to focus the respective plurality of beamlets to a
`
`position between the concentrating lens and the corresponding PV cell” limitation).
`
`Claim 14 is rejected under 35 U.S.C. 103(a) as being unpatentable over Mori and
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`Shiratsuchi as applied to claim 9 above, and further in view of US 20110023939 by
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`Chen et al (hereinafter Chen).
`
`Regarding Claim 14, Applicant is directed above for a full disclosure of modified
`
`Mori as it pertains to Claim 9. Modified Mori discloses a focusing lens having a first side
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`comprising a Fresnel lens and a second side comprising a plurality of microlenses but
`
`does not explicitly disclose “wherein the at least one concentrating lens includes a
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`plurality of concentrating lens and the at least one PV cell includes a plurality of PV
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`cells”.
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`However, Chen discloses a plurality of solar cell units having a plurality of
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`Fresnel lenses disposed, wherein each solar cell receives light from a corresponding
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`Fresnel lens (Fig. 2 [0034] corresponding to the claimed "wherein the at least one
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`concentrating lens includes a plurality of concentrating lens and the at least one PV cell
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`

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`Application/Control Number: 13/444,923
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`Page 12
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`Art Unit: 1755
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`includes a plurality of PV cells” limitation) in order to form an assembly of solar cell units
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`([0034]). Such an assembly is capable of converting more energy than a single solar
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`cell unit.
`
`Therefore, it would have been obvious to one having ordinary skill in the art to
`
`employ a plurality of solar concentrating units, as taught by Chen, because a plurality of
`
`units is capable of converting more energy than a single unit.
`
`Claim 18 is rejected under 35 U.S.C. 103(a) as being unpatentable over Mori and
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`Shiratsuchi as applied to claim 16 above, and further in view of US 20090185302 by
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`Forrester et al (hereinafter Forrester).
`
`Regarding Claim 18, Applicant is directed above for a full disclosure of modified
`
`Mori as it pertains to Claim 16. Modified Mori discloses a focusing lens having a first
`
`side comprising a Fresnel lens and a second side comprising a plurality of microlenses
`
`but does not explicitly disclose "wherein, for each concentrating lens, the plurality of
`
`microlenses are configured to produce a homogenized distribution of the superimposed
`
`plurality of beamlets on the corresponding PV cell”.
`
`However, Forrester discloses a solar concentrator comprising a Fresnel lens
`
`which directs light to a solar receiver as concentrated homogenized light (Abstract
`
`corresponding to the claimed “wherein, for each concentrating lens, the plurality of
`
`

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`Application/Control Number: 13/444,923
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`Page 13
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`Art Unit: 1755
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`microlenses are configured to produce a homogenized distribution of the superimposed
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`plurality of beamlets on the corresponding PV cell” limitation) in order to eliminate
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`hotspots which reduce efficiency of the solar cell by striking the cell with energy which is
`
`uniform in intensity ([0027]).
`
`Therefore, it would have been obvious to one having ordinary skill in the art to
`
`configure the Fresnel lens of modified Mori's solar concentrator to produce
`
`homogenized energy, as taught by Forrester, in order to increase cell efficiency by
`
`striking with light which is uniform in intensity, thereby eliminating hotspots (Forrester
`
`[0027D-
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to BETHANY LAMBRIGHT whose telephone number is
`
`(571 )270-7298. The examiner can normally be reached on Monday - Thursday 7:00 -
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`5:30.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Jonathan Johnson can be reached on 571-272—1177. The fax phone
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`number for the organization where this application or proceeding is assigned is 571 -
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`273-8300.
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`

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`Application/Control Number: 13/444,923
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`Page 14
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`Art Unit: 1755
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`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 http://pair-direct.uspto.gov. Should
`
`you have questions on access to the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
`
`USPTO Customer Service Representative or access to the automated information
`
`system, call 800-786-9199 (IN USA OR CANADA) or 571 -272-1 000.
`
`/JONATHAN JOHNSON/
`
`Supervisory Patent Examiner, Art Unit 1755
`
`/B. L./
`
`Examiner, Art Unit 1755
`
`