DETAILED ACTION
This is the third Office Action regarding application number 18/025,494, filed on 03/09/2023, which is a 371 of PCT/AU2021/051044, filed on 09/09/2021, and which claims foreign priority to AU 2020903248, filed on 09/10/2020.
This action is in response to the Applicant’s Response received 07/09/2025.
Status of Claims
Claims 1, 3-6, 9-13, 16, 19-21, 24, 26, 31, and 37 are currently pending.
Claims 2, 7, 8, 14, 15, 17, 18, 22, 23, 25, 27-30, and 32-36 are cancelled.
Claim 37 is new.
Claims 1, 16, and 31 are amended.
Claims 10, 12, 19, 20, and 31 are withdrawn.
Claims 1, 3-6, 9, 11, 13, 16, 21, 24, 26, and 37 are examined below.
Upon further examination, the Office has set forth a new ground of rejection.
No claim is allowed.
Response to Arguments
The Applicant’s arguments received 07/09/2025 have been carefully considered but they are moot in light of the Office’s new ground of rejection.
The examiner wishes to request an interview with the applicant to discuss the meaning of the term “thermovoltaic”. This is not a well-known term of art in the literature or the prior art. “Thermoelectric”, “thermophotovoltaic”, and “pyroelectric” are well-known terms. Since the applicant does not appear to be applying a thermal gradient to opposite electrodes, the examiner believes that “thermovoltaic” does not refer to “thermoelectric” (the applicant’s attorney appears to represent as much in the recent remarks). Since the claims recite a low band gap generally corresponding with infrared/heat, the examiner believes the applicant intends to claim a “thermophotovoltaic” device (also referred to as “TPV”). The applicant also describes and claims embodiments having radioactive materials within the device, and the examiner assumes that these radioactive materials generate decay particles that in turn collide with the surrounding materials and thermalize. A discussion would be helpful to ensure that all parties correctly understand the applicant’s claimed invention and the associated physical processes. If the examiner is incorrect with its assumptions, the inventor is also requested to provide information about the exact meaning of “thermovoltaic”.
The examiner includes additional discussion in the rejections below that are responsive to the applicant’s remarks about thermally excited charge carriers. The applicant’s remark that “to the extent that charge carriers might be produced in Brown’s device by dissipated heat from any alpha/beta particle mission, it would be clear to a POSITA that such charge carriers would not be useful/suitable for energy generation” requires evidence supported by an appropriate affidavit or declaration. MPEP 2145(I).
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.
Claims 1, 3-6, 9, 21, 24, 26, and 37 are rejected under 35 U.S.C. 103 as being unpatentable over BROWN (US 5,087,533 A) in view of KROON (“Thermoelectric plastics: from design to synthesis, processing and structure–property relationships”) and OZEL (“Dielectric and Raman spectroscopy of TlSe thin films”).
Regarding claims 1, 13, 16, and 37, BROWN teaches a thermoelectric device for converting thermal energy to electricity (intended use), the thermoelectric device comprising
a plurality of electrical cells (Fig. 3 illustrates several pairs), each cell comprising an asymmetric pair of metal-semiconductor junctions to produce an electric potential difference to capture thermally excited charge carriers within the semiconductor,
wherein the asymmetric pair of metal-semiconductor junctions is formed from two closely-spaced electrodes of different composition in contact with the semiconductor, one of the electrodes comprising a low work function metal material and the other electrode comprising a high work function metal material (metal electrode plates 71 and 73 include a high work function metal such as nickel and a low work function metal such as samarium, Table 1 and col. 7, ll. 12-20),
wherein the semiconductor is a solid-phase semiconducting material (silicon with isotope), and
wherein the thermally excited charge carriers are produced in the solid-phase semiconducting material by heat conductively delivered heat to the semiconductor in each cell (intended use).
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BROWN does not describe the recited intended use of the device, that the semiconductor comprises a conducting polymer blended with the semiconductor or the semiconductor comprises a semiconducting polymer; or that the semiconductor is a solid-phase low band-gap semiconducting material having a band gap of less than 1.1 eV.
KROON reports on methods of blending polymers with semiconductors (PEDOT:PSS with tellurium for example), and that polythiophene is a conducting polymer with is electron-rich (pg. 6153).
Skilled artisans would have found it obvious to modify BROWN and blend polymers with semiconductors in order to provide a conducting function to the material and form a matrix as desired by the envisioned application as taught by KROON (see KROON’s conclusions section).
OZEL teaches that thalium selenide (TlSe) is used in optoelectronic devices such as near and far infrared sensors, and has a band gap between 0.69-1.10 eV (pg. 72).
Skilled artisans would have found it obvious to modify BROWN and replace the silicon with TlSe having bandgap ≤1.1eV because of its utility with infrared light as taught by OZEL.
Further, skilled artisans would find it obvious to combine together a plurality of electrical cells because a single cell only makes electricity in the nanowatt range, which is very low. MPEP 2144.04. Said modification is only a prima facie duplication of parts.
The prior art does not mention thermally excited charge carriers. However, the device taught by the combined prior art references is substantially, if not entirely, identical to the device recited. Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The examiner considers it reasonable to believe that the prior art device will also convert thermal energy to electricity because it is structurally and compositionally identical to embodiments in the applicant’s disclosure that are also reported to have the recited intended use, function, and capabilities.
It is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP 2112.01).
Since the examiner 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 claims 3 and 4, modified BROWN teaches the electrical energy generating device according to claim 1, wherein the low work function metal material comprises one or more of europium, strontium, barium, samarium, dysprosium, neodymium, gadolinium, terbium, holmium, erbium, thulium, lanthanum, scandium, thorium, calcium, magnesium, cerium, yttrium, ytterbium, sodium, lithium, potassium, rubidium, hafnium, and cesium (claim 3), and the low work function metal material comprises samarium metal (claim 4) (metal electrode plates 71 and 73 include a high work function metal such as nickel and a low work function metal such as samarium, Table 1 and col. 7, ll. 12-20).
Regarding claim 5, modified BROWN teaches the electrical energy generating device according to claim 1, wherein the high work function metal material comprises one or more of nickel, platinum, silver, gold, aluminum, cobalt, chromium, copper, beryllium, bismuth, cadmium, iron, gallium, germanium, mercury, indium, iridium, manganese, molybdenum, niobium, osmium, lead, palladium, rhenium, rhodium, ruthenium, antimony, silicon, tin, tantalum, technetium, titanium, vanadium, tungsten, zinc and zirconium (Table I lists many of the materials for high work function).
Regarding claim 6, modified BROWN teaches the electrical energy generating device according to claim 5, wherein the high work function metal material comprises nickel metal (Table I lists nickel).
Regarding claim 9, modified BROWN teaches the thermovoltaic device according to claim 1, wherein the semiconductor comprises one or more of a Group IV semiconductor, a Group Ill-V compound semiconductor, and a semiconductor containing a Group VI element as a major constituent (selenium in TlSe is a Group VI element).
Regarding claim 21, modified BROWN teaches the thermovoltaic device according to claim 1, wherein the first and second electrodes are separated by a distance in the range from 0.3 to 100 micrometers (0.0005 inches between electrodes, equivalent to 12.7 micrometers, within the claimed range, col. 8, l. 37).
Regarding claim 24, modified BROWN teaches the thermovoltaic device according to claim 1, wherein the thermovoltaic device comprises a radioactive isotope (silicon with isotope) incorporated into the thermovoltaic device.
Regarding claim 26, modified BROWN teaches the thermovoltaic device according to claim 1, wherein the electrical cells are electrically connected in series or in parallel (instantly obvious and common knowledge to combine devices and cells together in series and parallel to generate a desired voltage and current; Official Notice).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over BROWN (US 5,087,533 A) in view of KROON (“Thermoelectric plastics: from design to synthesis, processing and structure–property relationships”) and OZEL (“Dielectric and Raman spectroscopy of TlSe thin films”), and further in view of SCURO (US 3,000,092).
Regarding claim 11, modified BROWN teaches the thermovoltaic device according to claim 1, but does not disclose expressly that the semiconductor is a Group Ill-V compound semiconductor comprises a pure nitride, phosphide, arsenide, antimonide or bismuthide of one or more of aluminum, gallium, indium, and thallium, or is a mixed nitride, phosphide, arsenide, antimonide, or bismuthide of one or more of aluminum, gallium, indium, and thallium (claim 11).
SCURO was published more than 60 years ago, and teaches a thermoelectric element and explains that indium arsenide is an excellent material because it has low electrical resistance (col. 1, l. 27).
Skilled artisans would have found it obvious to modify BROWN and alternatively use indium arsenide as a thermoelectric semiconductor material as taught by SCURO because it has low electrical resistance. It is well-known that InAs has a bandgap within the claimed range and is a III-V compound.
Conclusion
No claim is allowed.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELO TRIVISONNO whose telephone number is (571) 272-5201 or by email at <angelo.trivisonno@uspto.gov>. 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.
/ANGELO TRIVISONNO/
Primary Examiner, Art Unit 1721