DETAILED ACTION
Examiner’s Notes
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Remarks
Claims 1-8 and 19-21 are withdrawn.
Claims 9, 12, 14 are amended.
Claim 22 is cancelled.
Claims 1-21 are pending.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112:
(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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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.
Claims 9-18 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 9 recites “each of the at least one first plastically deformable functional layer (3, 7) and the at least one second plastically deformable functional layer (3, 7) are plastically deformed” in lines 14-16, which is not supported by the specification or previously presented claims. All claims which depend on clam 9 are rejected by virtue of dependency. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 9-14 and 16-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by OESTERLE (US 20110146743 A1).
Regarding claim 9, OESTERLE teaches a thermoelectric module (1) (see the thermoelectric generator in Figs. 1-3) comprising:
at least an inner tube (2) (see the inner wall 4);
an outer tube (8) (see the outer wall 14);
at least two thermoelectric base elements (5) (see the plurality of TE-elements 27);
the thermoelectric base elements (5) have a longitudinal extent parallel to a longitudinal extent of the inner tube (2) (see the longitudinal extent of the plurality of TE-elements 27 which is parallel to the longitudinal extent of the inner wall 4) (see Figs. 1-3);
at least one first plastically deformable functional layer (3, 7) between the inner tube (2) and the thermoelectric base elements (5) (see the inner contact layer (one of the multi-layer of polyimide, aramid, Kapton or generally from thermosetting plastics or from temperature-resistant plastics) 19 between the inner wall 4 and the plurality of TE-elements 27; [0047] The inner contact layer 19 and/or the outer contact layer 30 can comprise a multi-layer or multiply construction independent of the embodiments shown here. For example, pressure-proof insulation foils for example of polyimide, aramid, Kapton or generally from thermosetting plastics or from temperature-resistant plastics can be provided for embedding and insulating the conductors 29, 31 and for insulation against the inner wall 4 or against the outer wall 14 or the cooling jacket 15; The polyimide, aramid, Kapton or generally from thermosetting plastics or from temperature-resistant plastics is plastically deformable functional layer);
at least one second plastically deformable functional layer (3, 7) between the thermoelectric base elements (5) and the outer tube (8) (see the outer contact layer (one of the multi-layer of polyimide, aramid, Kapton or generally from thermosetting plastics or from temperature-resistant plastics) 30 between the plurality of TE-elements 27 and the outer wall 14; [0047] The inner contact layer 19 and/or the outer contact layer 30 can comprise a multi-layer or multiply construction independent of the embodiments shown here. For example, pressure-proof insulation foils for example of polyimide, aramid, Kapton or generally from thermosetting plastics or from temperature-resistant plastics can be provided for embedding and insulating the conductors 29, 31 and for insulation against the inner wall 4 or against the outer wall 14 or the cooling jacket 15; The polyimide, aramid, Kapton or generally from thermosetting plastics or from temperature-resistant plastics is plastically deformable functional layer); and
the inner tube (2), the at least one first plastically deformable functional layer (3, 7), the thermoelectric base elements (5), the at least one second plastically deformable functional layer (3, 7), and the outer tube (8) are connected by an interference fit assembly (see Figs. 2-3) in which each of the at least one first plastically deformable functional layer (3, 7) and the at least one second plastically deformable functional layer (3, 7) are plastically deformed (Figs. 1-3 shows that the inner contact layer (one of the multi-layer of polyimide, aramid, Kapton or generally from thermosetting plastics or from temperature-resistant plastics) 19 and the outer contact layer (one of the multi-layer of polyimide, aramid, Kapton or generally from thermosetting plastics or from temperature-resistant plastics) 30 are deformed; Regarding the recitation “are plastically deformed”, the recitation is directed to the method of making a product and it is noted that said limitations are not given patentable weight in product claims. Even though a product-by-process is defined by the process steps by which the product is made, determination of patentability is based on the product itself and does not depend on its method of production. See MPEP 2113 Product-by-Process Claims [R-9]. See also In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985).).
Regarding claim 10, Applicant is directed above for a full discussion as applied to claim 9.
OESTERLE teaches at least one electrically insulating functional layer (4, 6) between at least one of the inner tube (2) and the thermoelectric base elements (5) or the thermoelectric base elements (5) and the outer tube (8) (see the inner contact layer (another of the multi-layer of polyimide, aramid, Kapton or generally from thermosetting plastics or from temperature-resistant plastics) 19 and the outer contact layer (another of the multi-layer of polyimide, aramid, Kapton or generally from thermosetting plastics or from temperature-resistant plastics) 30) (see the rejection of claim 1 and Figs. 2-3).
Regarding claim 11, Applicant is directed above for a full discussion as applied to claim 9.
OESTERLE teaches the thermoelectric base elements (5) have at least one electrically insulating layer (see the inner contact layer (another of the multi-layer of polyimide, aramid, Kapton or generally from thermosetting plastics or from temperature-resistant plastics) 19 and the outer contact layer (another of the multi-layer of polyimide, aramid, Kapton or generally from thermosetting plastics or from temperature-resistant plastics) 30) (see the rejection of claim 1 and Figs. 2-3).
Regarding claim 12, regarding the claimed limitations required by claim 9 on which claim 12 depends, OESTERLE teaches a thermoelectric module (1) (see the thermoelectric generator in Figs. 1-3) comprising:
at least an inner tube (2) (see the inner wall 4);
an outer tube (8) (see the outer wall 14);
at least two thermoelectric base elements (5) (see the plurality of TE-elements 27);
the thermoelectric base elements (5) have a longitudinal extent parallel to a longitudinal extent of the inner tube (2) (see the longitudinal extent of the plurality of TE-elements 27 which is parallel to the longitudinal extent of the inner wall 4) (see Figs. 1-3);
at least one first plastically deformable functional layer (3, 7) between the inner tube (2) and the thermoelectric base elements (5) (see the inner contact layer (multi-layer of polyimide, aramid, Kapton or generally from thermosetting plastics or from temperature-resistant plastics) 19 between the inner wall 4 and the plurality of TE-elements 27; [0047] The inner contact layer 19 and/or the outer contact layer 30 can comprise a multi-layer or multiply construction independent of the embodiments shown here. For example, pressure-proof insulation foils for example of polyimide, aramid, Kapton or generally from thermosetting plastics or from temperature-resistant plastics can be provided for embedding and insulating the conductors 29, 31 and for insulation against the inner wall 4 or against the outer wall 14 or the cooling jacket 15; The polyimide, aramid, Kapton or generally from thermosetting plastics or from temperature-resistant plastics is plastically deformable functional layer);
at least one second plastically deformable functional layer (3, 7) between the thermoelectric base elements (5) and the outer tube (8) (see the outer contact layer (multi-layer of polyimide, aramid, Kapton or generally from thermosetting plastics or from temperature-resistant plastics) 30 between the plurality of TE-elements 27 and the outer wall 14; [0047] The inner contact layer 19 and/or the outer contact layer 30 can comprise a multi-layer or multiply construction independent of the embodiments shown here. For example, pressure-proof insulation foils for example of polyimide, aramid, Kapton or generally from thermosetting plastics or from temperature-resistant plastics can be provided for embedding and insulating the conductors 29, 31 and for insulation against the inner wall 4 or against the outer wall 14 or the cooling jacket 15; The polyimide, aramid, Kapton or generally from thermosetting plastics or from temperature-resistant plastics is plastically deformable functional layer); and
the inner tube (2), the at least one first plastically deformable functional layer (3, 7), the thermoelectric base elements (5), the at least one second plastically deformable functional layer (3, 7), and the outer tube (8) are connected by an interference fit assembly (see Figs. 2-3) in which each of the at least one first plastically deformable functional layer (3, 7) and the at least one second plastically deformable functional layer (3, 7) are plastically deformed (Figs. 1-3 shows that the inner contact layer (one of the multi-layer of polyimide, aramid, Kapton or generally from thermosetting plastics or from temperature-resistant plastics) 19 and the outer contact layer (one of the multi-layer of polyimide, aramid, Kapton or generally from thermosetting plastics or from temperature-resistant plastics) 30 are deformed; Regarding the recitation “are plastically deformed”, the recitation is directed to the method of making a product and it is noted that said limitations are not given patentable weight in product claims. Even though a product-by-process is defined by the process steps by which the product is made, determination of patentability is based on the product itself and does not depend on its method of production. See MPEP 2113 Product-by-Process Claims [R-9]. See also In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985).).
Therefore, OESTERLE teaches each of the at least one first plastically deformable functional layer and the at least one second plastically deformable functional layer (see each of the inner contact layer (multi-layer of polyimide, aramid, Kapton or generally from thermosetting plastics or from temperature-resistant plastics) 19 and the outer contact layer (multi-layer of polyimide, aramid, Kapton or generally from thermosetting plastics or from temperature-resistant plastics) 30) comprise at least two layers, including an electrically insulating functional layer (4, 6) and a plastically deformable functional layer (3, 7) (see the multi-layer of polyimide, aramid, Kapton or generally from thermosetting plastics or from temperature-resistant plastics; One of the multi-layer of polyimide, aramid, Kapton or generally from thermosetting plastics or from temperature-resistant plastics is an electrically insulating functional layer and another of the multi-layer of polyimide, aramid, Kapton or generally from thermosetting plastics or from temperature-resistant plastics is a plastically or elastically deformable functional layer).
Regarding claim 13, Applicant is directed above for a full discussion as applied to claim 9.
OESTERLE teaches at least one of: a first electrically insulating functional layer (4,
6) between the inner tube (2) and the thermoelectric base elements (5) or a first electrically insulating functional layer (4, 6) between the thermoelectric base elements (5) and the outer tube (8) (see the inner contact layer (another of the multi-layer of polyimide, aramid, Kapton or generally from thermosetting plastics or from temperature-resistant plastics) 19 and the outer contact layer (another of the multi-layer of polyimide, aramid, Kapton or generally from thermosetting plastics or from temperature-resistant plastics) 30) (see the rejection of claim 1 and Figs. 2-3).
Regarding claim 14, Applicant is directed above for a full discussion as applied to claim 9.
OESTERLE teaches at least one adhesive layer (see the adhesive layer between the contacts 31 and the plurality of TE-elements 27) disposed on a cold side (see the left cold side from the plurality of TE-elements 27) between the thermoelectric base elements (5) (see the plurality of TE-elements 27) and an adjoining one of the at least one first plastically deformable functional layer or the at least one second plastically deformable functional layer (see the adjoining one of the outer contact layer (multi-layer of polyimide, aramid, Kapton or generally from thermosetting plastics or from temperature-resistant plastics) 30) (see Fig. 3).
Regarding claim 16, Applicant is directed above for a full discussion as applied to claim 9.
OESTERLE teaches there are a multitude of said thermoelectric base elements (5) (see the multitude of the plurality of TE-elements 27 in Figs. 2, 3) that are mounted uniformly, in a radially symmetric manner along a circumference of the inner tube (2) (see Figs. 2, 3).
Regarding claim 17, Applicant is directed above for a full discussion as applied to claim 9.
OESTERLE teaches a turbulator in the inner tube (2) (see the heat exchanger structure 33, which turbulates the flow of the exhaust gas) (see Fig. 3).
Regarding claim 18, Applicant is directed above for a full discussion as applied to claim 9.
Regarding the claimed “wherein at least one of the inner tube (2) or the outer tube (8) is formed from a shape-memory alloy”, OESTERLE teaches at least one of the inner tube (2) or the outer tube (8) (see the rejection of claim 9) (Regarding the recitation “formed from a shape-memory alloy”, the recitation is directed to the method of making a product and it is noted that said limitations are not given patentable weight in product claims. Even though a product-by-process is defined by the process steps by which the product is made, determination of patentability is based on the product itself and does not depend on its method of production. See MPEP 2113 Product-by-Process Claims [R-9]. See also In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). Based on the Broadest Reasonable Interpretation of the limitation “formed from”, the original material(s) could be changed chemically and/or physically and the final product does not necessarily include the original material(s) after the process of “formed from”).
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 of this title, 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 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 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.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over OESTERLE (US 20110146743 A1) as applied to claim 9 above, further in view of LIMBECK (US 20140326288 A1).
Regarding claim 15, Applicant is directed above for a full discussion as applied to claim 9.
Regarding the claimed “wherein the thermoelectric base elements (5) are formed from p- and n-doped semiconductor elements that are connected to one another in an electrically conductive manner”, OESTERLE teaches the thermoelectric base elements (5) are formed from elements that are connected to one another in an electrically conductive manner (see the rejection of claim 9 and Fig. 3), but does not explicitly disclose the claimed “p- and n-doped semiconductor elements”. However, LIMBECK discloses a tubular thermoelectric module, wherein the n-doped and p-doped semiconductor elements 1 are situated adjacent one another in alternating fashion (see Figs. 10-14). It would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to employ the p- and n-doped semiconductor elements for the plurality of TE-elements in the device of OESTERLE as taught by LIMBECK, because the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination (MPEP 2144).
Response to Arguments
Applicant's arguments filed on 07/01/2025 have been fully considered, but they are not persuasive.
Regarding claim 1, Applicant’s argument regarding that the prior art does not teach or suggest the new limitation in the amended claim 1 in P7-P9, is not persuasive.
The new limitation in claim 1 is not supported by the specification or previously presented claims, therefore, claim 1 is newly rejected under 35 U.S.C. 112(a). And, the new recitation “are plastically deformed” is directed to the method of making a product and is not given patentable weight in product claim.
Conclusion
Applicant's amendment necessitated the modified and/or new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAE-SIK KANG whose telephone number is 571-272-3190. The examiner can normally be reached on 9:00am – 5:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew T. Martin can be reached on 571-270-7871. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TAE-SIK KANG/
Primary Examiner, Art Unit 1728