Board Finds Examiner Doth Protest Too Much; Reverses Obviousness Rejection

July 27, 2012 – Blog Post

In Ex Parte Ransquin, the Board reversed the Examiner’s obviousness rejection noting that the Examiner’s “continued reference” in his Answer to what the prior art discloses, evidenced “a fundamental misunderstanding by the Examiner of the difference between what references teach or disclose and what a proposed combination of references would have suggested to a person of ordinary skill in the art.” Ex Parte Ransquin, No. 2010-012450 (B.P.A.I. June 25, 2012). Since the references relied on by the Examiner failed to teach, suggest, or disclose the claimed invention, the Board held that the Examiner failed to establish a prima facie case of obviousness. Id. at 6.

The invention on appeal was directed to a photovoltaic generator that concentrates incident light, and protects against heating caused by this concentration. Id. at 2. Independent claim 1, which is illustrative of the subject matter, recites:

A concentrator photovoltaic generator, comprising at least one photoelectric cell [101] covered by a transparent protection layer [102] and further comprising a reflecting concentrator [106] for directing luminous flux [107] toward said photoelectric cell, said concentrator having a reflecting surface for reflecting incident radiation,

characterized in that the reflecting surface of said concentrator is covered by a filter [206] such that incident radiation must pass through said filter to reach said reflecting surface in order to be reflected, and after reflection by said reflecting surface must pass through said filter in order to be directed toward said photoelectric cell, said filter eliminating in the luminous flux directed by the concentrator toward the photoelectric cell most of the “unwanted” radiation [218] that is not able to excite the photoelectric cell. Id., at 4 (emphasis in original) (quotations in original) (numerals added).

For clarity, an admitted prior art generator and an embodiment of Ransquin’s generator are reproduced below as Fig. 1 and Fig 2, respectively:

Id. Fig. 1; Fig. 2. Conceding that the Appellant’s admitted prior art (AAPA), Fig. 1, failed to disclose a filter (206) covering the surface of the reflecting concentrator (106), the Examiner argued that it would have been obvious to place a filter (206) between the concentrator (106) and the cell (101) in view of U.S. Patent No. 5,611,870 (“Horne”).

Horne discloses that the use of a silicon prism concentrator between a filter and photovoltaic cell increases the efficiency of the system. Horne, col. 11 ll. 17–19. However, rather than having an inclined reflector (106) that is remote from and not in direct contact with the cell (101), Horne discloses a filter array deployed directly in contact with and over the top of a cell, i.e., a single stacked structure: filter/concentrator/cell. Id. Fig. 36; Ransquin, pp. 4–5.

The Board found that Horne’s arrangement, while having a concentrator between the filter and photoelectric cell, did not teach or suggest the physical structure recited in claim 1 nor any particular arrangement capable of performing the function of claim 1 – wherein radiation passes through a filter to a concentrator with the useful radiation being refracted and directed towards a photovoltaic cell and the “unwanted” radiation being directed away from the photovoltaic array. Ransquin, at 5.

Despite these critical deficiencies, the Examiner argued that because both Ransquin and Horne seek to improve the efficiency of energy conversion in their respective systems, a combination having two concentrators would have been obvious. Ironically, however, the Examiner also admitted that “one of ordinary skill in the art would realize that there is no need for a second concentrator for the same purpose.” Id. at 6.

Emphasizing the critical distinction between what the cited reference disclose, which is a question of fact, and the ultimate issue of obviousness, which is a question of law based on the underlying facts, the Board held the Examiner failed to establish a prima facie case of obviousness. Id. Here, not only did the cited references fail to teach, suggest, or even disclose the claimed invention, the Examiner argued that a person of ordinary skill in the art would have eliminated critical component – the second concentrator – of the claimed invention. If anything, such a modification would have reproduced the invention Horne; not Ransquin’s.