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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
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 1-2, 5-7, 11, 13-19, and 21-23 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Specifically, lines 17 through 19 recite “a first section, a second section, and a third section of the fluid flow part are sequentially disposed from the third surface to the fourth surface in a height direction, wherein the first to third sections are at the same height in the height direction,” however, the as-filed specification does not describe this limitation. While Fig. 12 of the as-filed specification does depict sections Y1, Y2, and Y3, as set forth in MPEP 2125 II "[I]t is well established that patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue." Claims 2, 5-7, 11, 13-19, and 21-23 are rejected due to their respective dependence on claim 1.
Claims 1-2, 5-7, 11, 13-19, and 21-23 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Specifically, lines 17 through 19 recite “a first section, a second section, and a third section of the fluid flow part are sequentially disposed from the third surface to the fourth surface in a height direction, wherein the first to third sections are at the same height in the height direction,” however, the manner in which a first section, a second section, and a third section of the fluid flow part are sequentially disposed from the third surface to the first surface in a height direction while being at the same height in the height direction is unclear. Claims 2, 5-7, 11, 13-19, and 21-23 are rejected due to their respective dependence on claim 1.
Claim Rejections - 35 USC § 103
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 correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
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 owned as of 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 effective filing dates of each claim that was not commonly owned as of the effective filing 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.
Claims 1-2, 5-7, 11, 13-19, and 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 2020/0373638 – hereinafter referred to as Lee ‘638) in view of Kwon et al. (KR 10-2019-0097380, cited on 12/09/2022 IDS, see attached machine translation).
Regarding claim 1, Lee ‘638 discloses a power generation device (abstract) comprising: a fluid flow part (Fig. 4) in which a flow path pipe is formed (136 in Fig. 4) and which includes a first surface (150 in Fig. 4), a second surface opposite to the first surface (140 in Fig. 4), and a third surface between the first surface and the second surface (surface containing 132 and 134 in Fig. 4), a fourth surface opposite to the third surface (surface opposite the surface containing 132 and 134 in Fig. 4), a fifth surface between the first surface, the second surface, the third surface, and the fourth surface (shown in annotated Fig. 4 below), and a sixth surface opposite to the fifth surface (shown in annotated Fig. 4 below); and a first thermoelectric module disposed on the first surface (120 on 150 in Fig. 3), wherein a fluid inlet and a fluid outlet which are disposed to be spaced apart from each other in a first direction are formed in the third surface (132 and 134 in Fig. 4), the flow path pipe is formed to connect from the fluid inlet to the fluid outlet (136 in relation to 132 and 134 in Fig. 4), the flow path pipe includes a plurality of first flow path pipe parts disposed in the first direction (shown in annotated Fig. 4 below), a plurality of second flow path pipe parts disposed in a second direction perpendicular to the first direction (shown in annotated Fig. 4 below), and a plurality of bent pipe parts disposed between and connected to the plurality of first flow path pipe parts and the plurality of second flow path pipe parts (U-shaped portions of 136 opposing the second flow path pipe portions in annotated Fig. 4 below satisfy the limitation requiring a plurality of bent pipe parts disposed between and connected to the first and second flow path pipe parts; it is noted that the limitation “connected” does not require direct physical contact or the absence of intermediate components), a first section, a second section, and a third section of the fluid flow part are sequentially disposed from the third surface to the fourth surface in a height direction, wherein the first to third sections are at the same height (note: the boundaries of the sections are not defined in the claims, and annotated Fig. 4 below depicts “sections” which satisfy the limitation requiring “a same height”) in the height direction (shown in annotated Fig. 4 below; it is noted that with regard to the limitation “height direction,” the limitation is dependent on the spatial orientation of the device), a first one of the plurality of first flow path pipe parts connected to the fluid inlet and passes through the first section (shown in annotated Fig. 4 below; it is noted that the limitation “connected” does not require direct physical contact or the absence of intermediate components), a first one of the plurality of second flow path pipe parts passing through the fifth section (shown in annotated Fig. 4 below), a second one of the plurality of first flow path pipe parts passing through the third section (shown in annotated Fig. 4 below; it is noted that any of the first flow path pipe parts in the third section in annotated Fig. 4 below satisfy the limitation “a second one of the plurality of first flow path pipe parts”), a second one of the plurality of second flow path pipe parts passing through the fourth section (shown in annotated Fig. 4 below; any of the second flow path pipe parts in the fourth section in annotated Fig. 4 below satisfy the limitation “a second one of the plurality of second flow path pipe parts), a third to fifth ones of the plurality of first flow path pipe parts passing through the second section (any three of the first flow path pipe parts in the second section in annotated Fig. 4 below satisfy the limitation “a third to fifth ones of the plurality of first flow path pipe parts”), a third one of the plurality of second flow path pipe parts passing through the fifth section (any of the second flow path pipe parts in the second section in annotated Fig. 4 below satisfy the limitation “a third one of the plurality of second flow path pipe parts”), a sixth one of the plurality of first flow path pipe parts passing through the first section (any of the first flow path pipe parts in the first section in annotated Fig. 4 below satisfy the limitation “a sixth one of the plurality of first flow path pipe parts”), a fourth one of the plurality of second flow path pipe parts passing through the fourth section (any of the second flow path pipe parts in the fourth section in annotated Fig. 4 below satisfy the limitation “a fourth one of the plurality of second flow path pipe parts”), a seventh one of the plurality of first flow path pipe parts passing through the third section (any of the first flow path pipe parts in the third section in annotated Fig. 4 below satisfies the limitation “a seventh one of the plurality of first flow path pipe parts”), and a fifth one of the plurality of second flow path pipe parts passing through the fifth section and connected to the fluid outlet (any of the second flow path parts in the fifth section in annotated Fig. 4 below satisfy the limitation “a fifth one of the plurality of second flow path pipe parts; it is noted that the limitation “connected” does not require direct physical contact or the absence of intermediate components).
While paragraph [0044] of Lee ‘638 does disclose the shape of each of the flow channels formed in the first cooling plate 130 and the second cooling plate 230 is determined on the basis of a predetermined cooling performance of each of the first heat exchanger 100 and the second heat exchanger 200, and in an embodiment, when the predetermined cooling performance of the first heat exchanger 100 is high, a flow channel 135 having a shape as shown in Fig. 4 is formed to thereby increase contact time of the coolant flowing through the flow channel with the first thermoelectric module 120, and on the contrary, when the predetermined cooling performance of the first heat exchanger 100 is low, a flow channel 136 having a shape as shown in Fig. 5 is formed to thereby decrease contact time of the coolant flowing through the flow channel with the first thermoelectric module; Lee ‘638 does not explicitly disclose a shape which would result in the sequential connection recited.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the shape of the flow channel of Lee ‘638, because as taught by Lee ‘638, the shape of each of the flow channels formed in the first cooling plate 130 and the second cooling plate 230 is determined on the basis of a predetermined cooling performance of each of the first heat exchanger 100 and the second heat exchanger 200 ([0044]). Based on the teaching of Lee ‘638, one of ordinary skill in the art at the time the invention was filed would have found it obvious to modify the shape of the flow channel of Lee ‘638 to increase contact time of the coolant flowing through the flow channel with the thermoelectric module 120 ([0044]). With regard to whether the modification of the shape of the flow channel satisfies the sequential connection claimed, the shape of the flow channel which achieves the increased contact time is a matter of design choice. While Table 1 and paragraphs [0126] through [0130] of the as-filed specification describe the impact of the length and width of the flow path on the difference in temperature in the thermoelectric module; Lee ‘638 discloses in paragraph [0044] the shape of each of the flow channels formed in the first cooling plate 130 and the second cooling plate 230 is determined on the basis of a predetermined cooling performance of each of the first heat exchanger 100 and the second heat exchanger 200, and in an embodiment, when the predetermined cooling performance of the first heat exchanger 100 is high, a flow channel 135 having a shape as shown in Fig. 4 is formed to thereby increase contact time of the coolant flowing through the flow channel with the first thermoelectric module 120, and on the contrary, when the predetermined cooling performance of the first heat exchanger 100 is low, a flow channel 136 having a shape as shown in Fig. 5 is formed to thereby decrease contact time of the coolant flowing through the flow channel with the first thermoelectric module.
Therefore, the relationship between the shape of the flow channel and cooling performance is known in the art. The as-filed specification is silent with regard to criticality or unexpected results commensurate in scope with the claimed shape/configuration. Such modification would involve a mere change in configuration. It has been held that a change in configuration of shape of a device is obvious, absent persuasive evidence that a particular configuration is significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Lee ‘638 does not explicitly disclose a plurality of through-holes passing through the first surface are formed in the fluid flow part.
Kwon discloses a power generation device ([0001]) and further discloses a plurality of through-holes passing through a surface of a fluid flow part (80a, 80b in Figures 1-4).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to include a plurality of through-holes, as disclosed by Kwon, in the first surface of Lee ‘638, because as evidenced by Kwon, the inclusion of a plurality of through-holes in a surface of a fluid flow part of a thermoelectric power generation device amounts to the use of known components in the art for their intended purpose to achieve an expected result, and one of ordinary skill would have a reasonable expectation of success when including a plurality of through-holes in the first surface of Lee ‘638 based on the teaching of Kwon.
With regard to the limitation “the third to fifth ones of the plurality of first flow path pipe parts, a first one of the plurality of bent pipe parts connecting the third one of the plurality of first flow path pipe parts and the fourth one of the plurality of first flow path pipe parts, and a second one of the plurality of bent pipe parts connecting the fourth one of the plurality of first flow path pipe parts and the fifth one of the plurality of first flow path pipe parts are disposed in a four sided region defined by the plurality of through-holes arranged at four corners in the second section, and a distance between the fluid inlet and the fluid outlet is greater than or equal to a distance between the second flow path part closest to the fifth surface among the plurality of second flow path parts and the second flow path part closest to the sixth surface among the plurality of second flow path parts,” the as-filed specification is silent with regard to unexpected results commensurate in scope with the claimed shape/configuration,, and it would have been obvious to one of ordinary skill in the art at the time the invention was filed to rearrange the plurality of through-holes of modified Lee ‘638 such that the third to fifth ones of the plurality of first flow path pipe parts, a first one of the plurality of bent pipe parts connecting the third one of the plurality of first flow path pipe parts and the fourth one of the plurality of first flow path pipe parts, and a second one of the plurality of bent pipe parts connecting the fourth one of the plurality of first flow path pipe parts and the fifth one of the plurality of first flow path pipe parts are disposed in a four sided region defined by the plurality of through-holes arranged at four corners in the second section, and a distance between the fluid inlet and the fluid outlet is greater than or equal to a distance between the second flow path part closest to the fifth surface among the plurality of second flow path parts and the second flow path part closest to the sixth surface among the plurality of second flow path parts, because such a configuration amounts to a rearrangement of parts of an invention, and it has been held that rearranging parts of an invention involves only routine skill in the art while the device having the claimed dimensions would not perform differently than the prior art device, In re Japikse, 86 USPQ 70.
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Regarding claim 2, modified Lee ‘638 discloses all the claim limitations as set forth above. Modified Lee ‘638 further discloses the first thermoelectric module (Lee ‘638 - 120 on 150 in Fig. 3) includes a first thermoelectric element disposed on the first surface (Lee ‘638; [0039] – thermoelectric module 120 necessarily includes a thermoelectric element) and a first heatsink disposed on the first thermoelectric element (Lee ‘638; 110 in Fig. 3); a first fluid configured to flow into the fluid inlet, pass through the flow path pipe and then discharge out from the fluid outlet (Lee ’38; [0049] discloses the capability of the disclosed structure to perform the claimed function); and a second fluid of which a temperature is different from a temperature of the first fluid is configured to pass the first heatsink in a direction from the fifth surface toward the sixth surface (Lee ‘638; [0052] discloses the capability to perform the claimed function); and the first direction is parallel to a direction in which the second fluid passes (Lee ‘638; direction of 132 and 134 in Fig. 4 in relation to the direction of the function disclosed in paragraph [0052]).
Regarding claim 5, modified Lee ‘638 discloses all the claim limitations as set forth above. Modified Lee ‘638 further discloses directions in which the first fluid is configured to pass through two first flow path pipe parts passing through the first section are opposite to each other (first section shown in annotated Fig. 4 above); and direction in which the first fluid is configured to pass through the two first flow path pipe parts passing through the third section are opposite to each other (third section shown in annotated Fig. 4 above). It is noted that if the sections depicted in annotated Fig. 4 above do not explicitly disclose the shape required to perform the function claimed, as set forth above, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the shape of the flow channel of modified Lee ‘638 because, as the as-filed specification is silent with regard to unexpected results commensurate in scope with the claimed shape/configuration, achieving the claimed shape of the flow channel is a matter of design choice. Such modification would involve a mere change in configuration. It has been held that a change in configuration of shape of a device is obvious, absent persuasive evidence that a particular configuration is significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Regarding claim 6, modified Lee ‘638 discloses all the claim limitations as set forth above.
With regard to the limitation “wherein a direction in which the first fluid is configured to pass through the first one of the plurality of first flow path pipe parts disposed closer to the third surface among the two first flow path pipe parts passing through the first section and a direction in which the first fluid is configured to pass through the seventh one of the plurality of first flow path pipe parts disposed closer to the fourth surface among the two first flow path pipe parts passing through the third section are the same as the direction in which the second fluid flows,” it would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the shape of the flow channel of modified Lee ‘638 such that a direction in which the first fluid is configured to pass through the first one of the plurality of first flow path pipe parts disposed closer to the third surface among the two first flow path pipe parts passing through the first section and a direction in which the first fluid is configured to pass through the seventh one of the plurality of first flow path pipe parts disposed closer to the fourth surface among the two first flow path pipe parts passing through the third section are the same as the direction in which the second fluid flows, because as the as-filed specification is silent with regard to unexpected results commensurate in scope with the claimed shape/configuration, the shape claimed would involve a mere change in configuration. It has been held that a change in configuration of shape of a device is obvious, absent persuasive evidence that a particular configuration is significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Regarding claim 7, modified Lee ‘638 discloses all the claim limitations as set forth above.
With regard to the limitation “wherein the first fluid in the third to fifth ones of the plurality of first flow path pipe parts is configured to pass in a direction which is the same as the direction in which the second fluid is configured to flow, to pass in a direction which is opposite to the direction in which the second fluid is configured to flow, and then to pass again in the direction which is the same as the direction in which the second fluid is configured to flow,” it would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the shape of the flow channel of modified Lee ‘638 such that the first fluid in the third to fifth ones of the plurality of first flow path pipe parts is configured to pass in a direction which is the same as the direction in which the second fluid is configured to flow, to pass in a direction which is opposite to the direction in which the second fluid is configured to flow, and then to pass again in the direction which is the same as the direction in which the second fluid is configured to flow, because as the as-filed specification is silent with regard to unexpected results commensurate in scope with the claimed shape/configuration, the shape claimed would involve a mere change in configuration. It has been held that a change in configuration of shape of a device is obvious, absent persuasive evidence that a particular configuration is significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Regarding claim 11, modified Lee ‘638 discloses all the claim limitations as set forth above. Modified Lee ‘638 further discloses the fluid flow part and the first thermoelectric module are coupled by a plurality of coupling members disposed in the plurality of through-holes (Kwon – 80a, 8ab in Figures 1-4).
Regarding claim 13, modified Lee ‘638 discloses all the claim limitations as set forth above.
With regard to the limitation “wherein the plurality of second flow path pipe parts are disposed outside the four sided region,” the as-filed specification is silent with regard to unexpected results commensurate in scope with the claimed shape/configuration, and it would have been obvious to one of ordinary skill in the art at the time the invention was filed to rearrange the plurality of through-holes of modified Lee ‘638 such that the plurality of second flow path pipe parts are disposed outside the four sided region, because such a configuration amounts to a rearrangement of parts of an invention, and it has been held that rearranging parts of an invention involves only routine skill in the art while the device having the claimed dimensions would not perform differently than the prior art device, In re Japikse, 86 USPQ 70.
Regarding claim 14, modified Lee ‘638 discloses all the claim limitations as set forth above. Modified Lee ‘638 further discloses some of the plurality of bent pipe parts connect one of the plurality of first flow path pipe parts and one of the plurality of second flow path pipe parts (some of the plurality of bent pipe parts of annotated Fig. 4 above necessarily connect one of the plurality of first flow path pipe parts and one of the plurality of second flow path pipe parts because limitation “connect” does not require direct physical contact or the absence of intermediate components).
Regarding claim 15, modified Lee ‘638 discloses all the claim limitations as set forth above.
Modified Lee ‘638 does not explicitly disclose a diameter of at least one of the plurality of bent pipe parts is greater than each of a diameter of at least one of the plurality of first flow path pipe parts and a diameter of at least one of the plurality of second flow path pipe parts, however, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the plurality of bent pipe parts of modified Lee ‘638 such that a diameter of at least one of the plurality of bent pipe parts is greater than each of a diameter of at least one of the plurality of first flow path pipe parts and a diameter of at least one of the plurality of second flow path pipe parts because such a modification would have involved a mere change in the size (or dimension) of a component. A change in size (dimension) is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and the device having the claimed dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device, Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Additionally, such modification would involve a mere change in configuration. It has been held that a change in configuration of shape of a device is obvious, absent persuasive evidence that a particular configuration is significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Regarding claim 16, modified Lee ‘638 discloses all the claim limitations as set forth above.
Modified Lee ‘638 does not explicitly disclose a diameter of at least one of the plurality of bent pipe parts is 1.1 times or more of each of a diameter of at least one of the plurality of first flow path pipe parts and a diameter of at least one of the plurality of second flow path pipe parts, however, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the plurality of bent pipe parts of modified Lee ‘638 such that a diameter of at least one of the plurality of bent pipe parts is 1.1 times or more of each of a diameter of at least one of the plurality of first flow path pipe parts and a diameter of at least one of the plurality of second flow path pipe parts because such a modification would have involved a mere change in the size (or dimension) of a component. A change in size (dimension) is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and the device having the claimed dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device, Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Additionally, such modification would involve a mere change in configuration. It has been held that a change in configuration of shape of a device is obvious, absent persuasive evidence that a particular configuration is significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Regarding claim 17, modified Lee ‘638 discloses all the claim limitations as set forth above.
Modified Lee ‘638 Lee does not explicitly disclose a distance between the fluid inlet and the fluid outlet is greater than or equal to a distance between the fourth one of the plurality of second flow path pipe parts closest to the fifth surface and the fifth one of the plurality of second flow path pipe parts closest to the sixth surface, however, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the fluid inlet and the fluid outlet of modified Lee ‘638 such that a distance between the fluid inlet and the fluid outlet is greater than or equal to a distance between the fourth one of the plurality of second flow path pipe parts closest to the fifth surface and the fifth one of the plurality of second flow path pipe parts closest to the sixth surface because such a modification would have involved a mere change in the size (or dimension) of a component. A change in size (dimension) is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and the device having the claimed dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device, Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Additionally, such modification would involve a mere change in configuration. It has been held that a change in configuration of shape of a device is obvious, absent persuasive evidence that a particular configuration is significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Regarding claim 18, modified Lee ‘638 discloses all the claim limitations as set forth above. Modified Lee ‘638 further discloses a second thermoelectric module (Lee ‘638; 220 in Fig. 3) including a second thermoelectric element disposed on the second surface (Lee ‘638; [0042] – thermoelectric module 220 necessarily includes a thermoelectric element) and a second heatsink disposed on the second thermoelectric element (Lee ‘638; 210 on 220 in Fig. 3), wherein the second fluid is configured to pass the second heatsink in a direction from the fifth surface toward the sixth surface (Lee ‘638; [0052] discloses the capability to perform the claimed function).
It is noted that the term “heatsink” is directed to the manner in which the device is intended to be used, a recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
Regarding claim 19, modified Lee ‘638 discloses all the claim limitations as set forth above. Modified Lee ‘638 further discloses a branching part disposed on the fifth surface (Lee ‘638; dissipation fin 214 in Fig.3 satisfies the limitation “a branching part.” It is noted that the limitation “disposed on” does not require direct physical contact or the absence of intermediate components).
With regard to the limitation “to split the second fluid,” the limitation is directed to the manner in which the device is intended to be used, and it is noted that a recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
Regarding claim 21, modified Lee ‘638 discloses all the claim limitations as set forth above. Modified Lee ‘638 further discloses the fourth section is a section including the fluid inlet (Lee ‘638; 132 in relation to fourth section as depicted in annotated Fig. 4 above), and the fifth section is a section including the fluid outlet (Lee ‘638; 134 in relation to fifth section as depicted in annotated Fig. 4 above).
Regarding claim 22, modified Lee ‘638 discloses all the claim limitations as set forth above. Modified Lee ‘638 further discloses the plurality of through-holes are formed to pass through the first surface and the second surface of the fluid flow part (Kwon – 80a, 80b in Figures 1-4).
Regarding claim 23, modified Lee ‘638 discloses all the claim limitations as set forth above. Modified Lee ‘638 further discloses the plurality of through-holes are disposed spaced apart from the flow path pipe (Kwon – 80a in Fig. 4).
Relevant Prior Art
The following references, while not relied upon in the rejection of record, disclose a plurality of through-holes in a surface of a fluid flow part: Pfahnl et al. (US 6,717,115) (Figures 3-5 and 10-11); KR 20170011156 A (203 and 403 in Figures 1 and 7).
Response to Arguments
Applicant's arguments filed 10/28/2025 have been fully considered but they are not persuasive. Specifically, Applicant argues that Lee does not teach or suggest the features recited in claim 1 related to the first to fifth sections.
In response to Applicant’s argument, annotated Figure 4 above of Lee ‘638 depicts the first to fifth sections, and as set forth in the office action, the as-filed specification is silent with regard to criticality or unexpected results commensurate in scope with the claimed shape/configuration. A modification of the shape of the flow channel of Lee ‘638 involves a mere change in configuration. It has been held that a change in configuration of shape of a device is obvious, absent persuasive evidence that a particular configuration is significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Applicant further argues Lee does not teach or suggest any through-holes and cannot teach features in claim 1 related to a plurality of through holes formed in the fluid flow part and passing through the first surface.
In response to Applicant’s argument, Lee ‘638 as modified by Kwon, as set forth above, is relied upon to teach the plurality of through-holes. Additionally, in response to Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Additionally, Applicant argues that Lee teaches that the distance between the inlet 132 and the outlet 134 is smaller than the maximum distance between the second path pipe parts and teaches away from the feature in claim 1 that a distance between the fluid inlet and the fluid outlet is greater than or equal to a distance between the second flow path part closest to the fifth surface among the plurality of second flow path parts and the second flow path part closest to the sixth surface among the plurality of second flow path parts. Further, Applicant argues that as described in the present application, fluid can flow uniformly throughout the entire region of the fluid flow part, and a uniform temperature distribution is maintained, thereby preventing the occurrence of a dead zone, and it is further possible to obtain an effect of minimizing stagnation of the fluid by minimizing curved regions along the path of the flow path pipe.
In response to Applicant’s argument, unexpected results must be established by factual evidence; mere argument or conclusory statements in the specification do not suffice. In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1365 (Fed. Cir. 1977) (quoting In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984)).
Applicant has not provided evidence that the shape recited in the claim results in improved performance over the shape disclosed in the prior art. As set forth in the office action, absent a showing of criticality of the claimed shape, or unexpected results, the shape claimed amounts to a mere change in configuration. It has been held that a change in configuration of shape of a device is obvious, absent persuasive evidence that a particular configuration is significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Further, such a modification would have involved a mere change in the size (or dimension) of a component. A change in size (dimension) is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and the device having the claimed dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device, Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Additionally, in response to Applicant’s argument, Lee ‘638 discloses in paragraph [0044] that the shape of each of the flow channels formed in the first cooling plate 130 and the second cooling plate 230 is determined on the basis of a predetermined cooling performance of each of the first heat exchanger 100 and the second heat exchanger 200, and in an embodiment, when the predetermined cooling performance of the first heat exchanger 100 is high, a flow channel 135 having a shape as shown in Fig. 4 is formed to thereby increase contact time of the coolant flowing through the flow channel with the first thermoelectric module 120, and on the contrary, when the predetermined cooling performance of the first heat exchanger 100 is low, a flow channel 136 having a shape as shown in Fig. 5 is formed to thereby decrease contact time of the coolant flowing through the flow channel with the first thermoelectric module.
Therefore, the relationship between the shape of the flow channel and cooling performance is known in the art. As set forth above, modification of the shape of the flow channel of Lee ‘638 amounts to a mere change in configuration. It has been held that a change in configuration of shape of a device is obvious, absent persuasive evidence that a particular configuration is significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Applicant argues that the first and second coupling holes in Kwon merely provide
openings in first cooling plate and second cooling plate to receive first and second coupling means and do not teach or suggest the features in claim 1. Applicant further argues that Kwon is also silent regarding the distance between the fluid inlet and the fluid outlet being greater than or equal to the distance between the second flow path part closest to the fifth surface among the plurality of second flow path parts and the second flow path part closest to the sixth surface among the plurality of second flow path parts.
In response to Applicant’s argument, Kwon is relied upon to teach a plurality of through-holes passing through a surface of a fluid flow part (80a, 80b in Figures 1-4). As set forth in the office action, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to include a plurality of through-holes, as disclosed by Kwon, in the first surface of Lee ‘638, because as evidenced by Kwon, the inclusion of a plurality of through-holes in a surface of a fluid flow part of a thermoelectric power generation device amounts to the use of known components in the art for their intended purpose to achieve an expected result, and one of ordinary skill would have a reasonable expectation of success when including a plurality of through-holes in the first surface of Lee ‘638 based on the teaching of Kwon.
Additionally, in response to Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
It is noted that while the claim amendment does overcome the 112 rejection set
forth in the previous office action, the current claims are rejected under 112(a) and 112(b) as set forth above.
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.
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/TAMIR AYAD/Primary Examiner, Art Unit 1726