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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
`
`16/708,829
`
`12/10/2019
`
`Yuya Nakamura
`
`P191305US00
`
`2686
`
`WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`TRIVISONNO, ANGELO
`
`ART UNIT
`1721
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`05/05/2021
`
`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*
`1-11 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) 2,4-5 and 10-11 is/are withdrawn from consideration.
`() Claim(s)__ is/are allowed.
`Claim(s) 1,3 and 6-9 is/are rejected.
`S)
`) © Claim(s)___is/are objected to.
`C] 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:/Awww.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)M The drawing(s) filed on 12/10/2019 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)() None ofthe:
`b)( Some**
`a) All
`1.4) Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No.
`3.1.) 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.
`
`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
`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 20210503
`
`Application No.
`Applicant(s)
`16/708 829
`Nakamuraetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`ANGELO TRIVISONNO
`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 04/28/2021.
`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: 16/708,829
`Art Unit: 1721
`
`Page 2
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`DETAILED ACTION
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`This is the first Office Action regarding application number 16/708,829, filed on
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`12/10/2019, which claims foreign priority to JP 2018-234028 and JP 2019-164207, filed
`
`on 12/14/2018 and 09/10/2019, respectively.
`
`This action is in response to the Applicant's Response dated 04/28/2021.
`
`The present application, filed on or after March 16, 2013, is being examined
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`under the first inventor to file provisions of the AIA.
`
`In the event the determination of the status of the application as subject to AIA 35
`
`U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103)is incorrect, any
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`correction of the statutory basis for the rejection will not be considered a new ground of
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`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
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`the same under either status.
`
`Election of Restricted Inventions
`
`The Applicant’s election of Species A2 (claims 1, 3, and 6-9) in the repliesfiled
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`on 04/28/2021 and 04/30/2021 is acknowledged. Because the Applicant did not
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`distinctly and specifically point out the supposederrors in the Restriction Requirement,
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`the election has been treated as an election without traverse. See MPEP § 818.03(a).
`
`Status of Claims
`
`Claims 1-11 are currently pending.
`
`Claims 7-11 are new.
`
`Claims 1, 2, 5, and 6 are amended.
`
`

`

`Application/Control Number: 16/708,829
`Art Unit: 1721
`
`Page 3
`
`Claims 2, 4, 5, 10, and 11 are withdrawn.
`
`Claims 1, 3, and 6-9 are examined below.
`
`No claim is allowed.
`
`Specification
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`The specification is objected to because it does not include the publication
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`number for the cited Japanese reference in paragraph 2. 2016-175020 is the Japanese
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`application number and 2018-041840is the publication number. The examiner also
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`notes that the applicant submitted a machine translation of an unrelated reference
`
`related to waste water treatment.
`
`Claim Objections
`
`Claims 1, 5, and 9 are objected to because of the following informalities:
`
`Claim 1 recites “a first transparent members” and “a second transparent
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`members”. The applicant should amend these to read “member”instead of “members’,
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`or at least be consistent and clear with the terms.
`
`Claims 5 and 9 include multiple recitations of “a transparent conductive layer’,
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`but the applicant should instead recite “a first transparent conductive layer” and “a
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`second transparent conductive layer’.
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`Appropriate correction is required.
`
`Claim Rejections - 35 USC § 103
`
`

`

`Application/Control Number: 16/708,829
`Art Unit: 1721
`
`Page 4
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`obviousnessrejections setforth in this Office action:
`
`A patent for a claimed invention may not be obtained, notwithstanding that the claimed
`invention is not identically disclosed as set forth in section 102 of thistitle, if the differences
`between the claimed invention andthe prior art are such that the claimed invention as a whole
`would have been obvious before the effectivefiling 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 whichthe invention was made.
`
`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148
`
`USPQ 459 (1966), that are applied for establishing a background for determining
`
`obviousness under 35 U.S.C. 103 are summarized asfollows:
`
`-FoONM>
`
`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 pertinentart.
`Considering objective evidence presentin the application indicating obviousness or
`nonobviousness.
`
`Claims 1, 3, and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable
`
`over NAKATANI (US 2008/0230114 A1).
`
`Regarding claim 1, NAKATANI teachesa solar cell module, comprising:
`
`a plurality of solar cells (solar cell 13a-d) arranged in a line alongafirst direction
`
`(Fig. 11);
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`a plurality of wiring members configured to connect adjacent solarcells in the
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`plurality of solar cells (wiring member not shownin Figures, but described in para. 25);
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`a first transparent member (15S) disposed, for each of the solar cells, on a light
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`receiving surface side of the solar cells and bondedto the plurality of wiring members;
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`and
`
`

`

`Application/Control Number: 16/708,829
`Art Unit: 1721
`
`Page 5
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`a second transparent member (15B) disposed, for each of the solar cells, ona
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`rear surface side located opposite to the light receiving surface side of the solarcells,
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`and bondedto plurality of wiring members,
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`a first protecting member (11) provided on the light receiving surface side over
`
`the first transparent members;
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`a first encapsulant provided (14S) on the light receiving surface side between the
`
`first transparent members and the first protecting member;
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`a second protecting member (12) provided on the rear surface side over the
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`second transparent members; and
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`a second encapsulant (14B) provided on the rear surface side between the
`
`second transparent members and the second protecting member, wherein each of the
`
`solar cells is sandwiched between the first transparent member and the second
`
`transparent member.
`
`15Sb } 18Sc
`
`14 REEREEOSES
`148 ELZILALTALLIS
`==13d
`
`\=158
`
`
`[eee 12
`13b 15Bb 4 15Be 13c¢
`
`Annotated
`
`F|e 4B
`
`frstdirection
`
`NAKATANI does notdisclose expressly that the solar cell module comprises a
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`plurality of solar cells arranged in a line along a second direction that intersects the first
`
`

`

`Application/Control Number: 16/708,829
`Art Unit: 1721
`
`Page 6
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`direction, or that the first transparent member and the second transparent member have
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`a length equal to or longer than a length of the solar cell in the second direction.
`
`The examiner finds that skilled artisans would understand the two-dimensional
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`arrangement of multiple solar cells in rows and columns to be of the most basic and
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`routine configurations knownin the art. Such a modification of NAKATANI would also
`
`require only a simple duplication and rearrangement of parts that produce no new or
`
`unexpected result. MPEP 2144.04. Further, the examiner concludes that it would have
`
`been obvious to a person having ordinary skill in the art before the effective filing date of
`
`the claimed invention to form the first and second transparent membersto have lengths
`
`equal to or longer than a length of the solar cells in the second direction because
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`NAKATANI illustrates in Figure 4B that the dimensions of these layers matches the
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`dimensions of the solar cells.
`
`Regarding claim 3, NAKATANI teaches or would have suggested the solarcell
`
`module according to claim 1, wherein a length in the first direction of the first
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`transparent member is equal to a length in the first direction of the solar cell (lengths
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`equalin first direction, annotated Fig. 4B).
`
`Regarding claim 6, NAKATANI teaches or would have suggested the solarcell
`
`module according to claim 1, the first transparent member and the second transparent
`
`member have a length equal to or shorter than a length of the solar cell in the first
`
`direction (lengths equalin first direction, annotated Fig. 4B).
`
`

`

`Application/Control Number: 16/708,829
`Art Unit: 1721
`
`Page 7
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`Regarding claim 7, NAKATANI teaches or would have suggested the solarcell
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`module according to claim 1, wherein softening temperatures ofthe first encapsulant
`
`and the second encapsulant are lower than thoseofthe first protecting member and the
`
`second protecting member (para. 66 describes how the entire device is laminated
`
`where the encapsulant becomes softer and the compression allows the encapsulantto
`
`seal the device).
`
`Regarding claim 8, NAKATANI teaches or would have suggested the solarcell
`
`module according to claim 1, wherein at least one of the first protecting member and the
`
`second protecting member haslight transmission properties and water cut-off properties
`
`(the EVA and PVB materials have light transmission and water cut-off properties).
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`Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over
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`NAKATANI (US 2008/0230114 A1) in view of TAGUCHI (US 2009/0194148 A1).
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`Regarding claim 9, NAKATANI teaches or would have suggested the solarcell
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`module according to claim 1, but does not disclose expressly that the solarcell
`
`comprises a transparent conductive layer as part of a light receiving surface anda
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`transparent conductive layer as part of a rear surface opposite the light receiving
`
`surface.
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`TAGUCHI teachesa solar cell module with solar cells comprising a transparent
`
`conductive layer as part of a light receiving surface and a transparent conductive layer
`
`as part of a rear surface opposite the light receiving surface (para. 51).
`
`

`

`Application/Control Number: 16/708,829
`Art Unit: 1721
`
`Page 8
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`It would have been obvious to a person having ordinary skill in the art before the
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`effective filing date of the claimed invention to modify NAKATANI and add transparent
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`conductive layers to the front and rear solar cell surfaces as taught by TAGUCHI in
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`order to electrically connectthe plurality of solar cells with wiring members (TAGUCHI,
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`para. 51).
`
`Conclusion
`
`No claim is allowed.
`
`ContactInformation
`
`Any inquiry concerning this communication or earlier communications from the
`
`Examiner should be directed to ANGELO TRIVISONNO whosetelephone number is
`
`(571) 272-5201. The Examiner can normally be reached on MONDAY-FRIDAY,9:00a-
`
`5:00pm EST.
`
`If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's
`
`supervisor, ALLISON BOURKE, can be reached at (303) 297-4684. The fax phone
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`number for the organization where this 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 http://portal.uspto.gov/. Should
`
`

`

`Application/Control Number: 16/708,829
`Art Unit: 1721
`
`Page 9
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`you have questions on accessto the Private PAIR system, contact the Electronic
`
`Business Center at (866) 217-9197(toll-free).
`
`If you would like assistance from a
`
`USPTO Customer Service Representative or access to the automatedinformation
`
`system, call (800) 786-9199 or (571) 272-1000.
`
`/ANGELO TRIVISONNO/
`Primary Examiner, Art Unit 1721
`
`