DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The amendments filed on 2/10/2026 does not put the application in condition for allowance.
Examiner withdraws all rejections in the prior office action due to the arguments.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth 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, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
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 present in the application indicating obviousness or nonobviousness.
Claim(s) 1-4 and 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kirihara (US Pub No. 20220052247) in view of Dahal (Chem. Mater. 2010, 22, 2892–2897)
Regarding Claim 1 and 6, Kirihara et al. teaches an element made of:
a first material with a stoichiometric composition of Fe3X where X is a main-group element [Fe3Al, 0046] and with a composition ratio of 3:1, and exhibits an anomalous Nernst effect, and is a thermoelectric conversion material [Abstract, 0042-0043, 0045]. The thermoelectric generation layer 10 has a power generation layer 10 [0043, 0046], the thermoelectric conversion element has an elongated shape; and the first material is capable of being magnetized in a width direction of the elongated shape [Fig. 4, 0050].
Kirhara et al. is silent on the first material having a DO3 type crystal structure derived from a body centered cubic structure when X is aluminum.
Dahal et al. teaches magnetic Fe3Si nanoparticles [Abstract] with a D03 structure [page 2893, middle and bottom right of page] that have ferromagnetic properties [page 2892, middle left of page], where the use of Fe3Si is more environmentally friendly and cost effective [page 2897, middle and bottom right of page].
Since Kirihara et al. teaches Fe3Al as a magnetic material, it would have been obvious to one of ordinary skill in the art before the filing of the invention to replace the Fe3Al of Kirihara et al. with the Fe3Si of Dahal al. in order to provide a compound that is more environmentally friendly and cost effective [page 2897, bottom right of page].
In addition, the combination would have been merely the selection of a conventional engineering design and one of ordinary skill would have a reasonable expectation of success in doing so.
The combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, A.).
Regarding Claim 2, within the combination above, modified Kirihara et al. teaches all the structural limitations of the claim; therefore, it is the view of the examiner, based on the teaching of Kirihara et al., has a reasonable basis to believe that the claimed properties are inherently possessed by the device of modified Ishida et al. meeting the limitation of “wherein the first material has a Nernst coefficient which is constant within a predefined temperature range including room temperature.”
Since the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to applicants to show otherwise. In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).
Regarding Claim 3, within the combination above, modified Kirihara et al. teaches wherein the first material is a single crystal [0111].
Regarding Claim 4, within the combination above, modified Kirihara et al. teaches wherein the first material, the second material, the third material, the fourth material, or the fifth material is a polycrystal [0105].
Regarding Claim 7, within the combination above, modified Kirihara et al. teaches wherein the thermoelectric conversion element is a thin film with a thickness of 1 um or more overlapping the claimed 10 um or less [0047].
In the case where the claimed ranges “overlap or 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
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kirihara (US Pub No. 20220052247) in view of Dahal (Chem. Mater. 2010, 22, 2892–2897) as applied above in addressing claim 1, in further view of Tatoh (US Pub No. 2003/0057560)
Regarding Claim 5, within the combination above, modified Kirihara et al. is silent on wherein
the first material, the second material, the third material, the fourth material, or the fifth material is a polycrystal.
Tatoh et al. teaches the formation of a thermoelectric element in the form of a single crystal, polycrystal, or amorphous [0096].
Since modified Kirihara et al. teaches the formation of a thermoelectric material, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the thermoelectric material of modified Kirihara et al. in the form of a single crystal, polycrystal, or amorphous [0096] as taught by Tatoh et al. as it is merely the selection of a conventional engineering design for thermoelectric materials in the art and one of ordinary skill in the art would have a reasonable expectation of success in doing so.
The combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, A.).
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kirihara (US Pub No. 20220052247) in view of Dahal (Chem. Mater. 2010, 22, 2892–2897) as applied above in addressing claim 1, in further view of Ishida (US Pub No. 2015/0380630)
Regarding Claim 10, within the combination above, modified Kirihara et al. is silent on thermoelectric conversion device comprising:
the thermoelectric conversion element according to claim 1; and
a hollow member, wherein
the thermoelectric conversion element is a sheet-shaped element on an outer surface of the hollow member
Ishida et al. teaches a thermoelectric conversion device comprising:
the thermoelectric conversion element according to claim 1 [Fig. 8, 0071]; and
a hollow member [See inside portion of 510, Fig. 8, 0071], wherein
the thermoelectric conversion element is a sheet-shaped element on an outer surface of the hollow member [Fig. 8, 0071].
Since Kirihara et al. teaches the use of a thermoelectric material, it would have been obvious to one of ordinary skill in the art before the filing of the invention to apply the thermoelectric material of modified Kirihara et al. in place of the thermoelectric material of Ishida et al. as it is merely the selection of a conventional thermoelectric material in the art and one of ordinary skill would have a reasonable expectation of success in doing so.
The combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, A.).
Claim(s) 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable Kirihara (US Pub No. 20220052247) in view of Dahal (Chem. Mater. 2010, 22, 2892–2897) as applied above in addressing claim 1, in further in view of Ishida (US Pub No. 2015/0380630) and Nakamura (US Pub No. 2016/0155924)
Regarding Claim 8, within the combination above, modified Kirihara et al. is silent on the limitations of claim 8,
Ishida et al. teaches a thermoelectric conversion device comprising:
the thermoelectric conversion element according to claim 1 [Fig. 8, 0071]; and
a hollow member [See inside portion of 510, Fig. 8, 0071], wherein
the thermoelectric conversion element is a sheet-shaped element on an outer surface of the hollow member [Fig. 8, 0071].
a substrate [510, Fig. 8, 0071]; and
a power generator [520, Fig. 8, 0073] provided on the substrate [510, Fig. 8, 0071] and including a plurality of thermoelectric conversion elements [See plurality of 110 and 120, Fig. 8, 0032], wherein
each of the plurality of thermoelectric conversion elements has a shape extending in one direction [Fig. 8],
Since Kirihara et al. teaches the use of a thermoelectric material, it would have been obvious to one of ordinary skill in the art before the filing of the invention to apply the thermoelectric material of modified Kirihara et al. in place of the thermoelectric material of Ishida et al. as it is merely the selection of a conventional thermoelectric material in the art and one of ordinary skill would have a reasonable expectation of success in doing so.
The combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, A.).
Within the combination above, modified Kirihara et al. teaches is made of a material identical to that of the thermoelectric conversion element according to claim 1 [see rejection of claim 1], and silent on the plurality of thermoelectric conversion elements are arranged in parallel to one another in a direction perpendicular to the one direction and electrically connected in series to one another.
Nakamura et al. teaches a configuration of a plurality of thermoelectric conversion elements are arranged in parallel to one another in a direction perpendicular to the one direction and electrically connected in series to one another [See 11 and 12 in figure 4, 0043].
Since modified Kirihara et al. teaches the use of a thermoelectric material, it would have been obvious to one of ordinary skill in the art before the filing of the invention modify the thermoelectric members of modified Kirihara et al. with the configuration of Nakamura et al. as it is merely the selection of a conventional engineering design for thermoelectric devices in the art and one of ordinary skill would have a reasonable expectation of success in doing so.
The combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, A.).
Regarding Claim 9, within the combination above, modified Kirihara et al. teaches wherein the plurality of thermoelectric conversion elements are arranged in a serpentine shape [Ishida: Fig. 8, 0071].
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-10 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL Y SUN whose telephone number is (571)270-0557. The examiner can normally be reached 9AM-7PM.
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/MICHAEL Y SUN/ Primary Examiner, Art Unit 1728