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 .
Drawings
The drawings were received on 10/06/2025. These drawings are acceptable.
Specification
The amendment to the specification obviates the objection to the specification set forth in the previous office action.
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.
Claims 24 and 26-33 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Specifically, Applicant has not enabled one of ordinary skill in the art to make the thermoelectric transducer as claimed. While the specification does describe preferred conductive metal oxides and electrical semiconductors on page 19 of the as-filed specification, and lists 21 metals in Table 1 of the as-filed specification, and states on page 20 of the as-filed specification “This leaves us with a total of 21 metals (Table 1) which can be used to make a reasonable number of combinations with the aforementioned metallic oxides, and form the most convenient metal-metal oxide unions according to the specific use you want to give them;” the as-filed specification does not provide working examples showing the materials and associated dimensions/parameters required to form the thermoelectric transducer device claimed with the ability to perform the functions described.
Wands Analysis: [Note MPEP 2164.01(a)]
(A) Breadth of claims:
The process limitations of the claims are broad in that they merely state the pair of discharge or drain electrodes including one or more segments of different conductive metals connected to each other in series one after the other, wherein the core includes: two materials that form a non-ohmic electronic union by deposition of a layer of a metal oxide on a transition metal, the metal oxide layer being conductive or a semiconductor; and the transition metal being non-synthesized, non-radioactive, or toxic in nature and including an atom, wherein the atom includes an incomplete sub-layer or wherein the atom is capable of giving rise to cations with an incomplete sub layer.
(B) The nature of the invention:
The invention is a thermoelectric device.
(C) The state of the prior art:
Given the state of the prior art, the claimed materials for the formation of a thermoelectric transducer device requires a more detailed disclosure by the Applicant in order to enable one skilled in the art to produce a transducer configured to perform the functions claimed. Zhao et al. (“Ionic thermoelectric gating organic transistors”) is representative of the state of the prior art with regard to the materials used to produce heat gated transistors.
(D) The level of one of ordinary skill:
One of ordinary skill in this art is considered to be a scientist, skilled in the methods of thermoelectric design and processes, with knowledge of standard thermoelectric devices, and familiar with parameters that affect the formation and performance of such devices.
(E) The level of predictability in the art:
The level of predictability in the art is considered to be low, inasmuch as there are numerous variables known to affect thermoelectric device manufacturing and performance.
(F) The amount of direction provided by the inventor:
The inventor does not provide adequate direction as to how to formulate a process which meets the claim limitations. The specification describes the claimed process with language that is essentially the same as that recited in the claims or entirely conventional in the art. There is not adequate guidance as to what the specific process parameters should be, beyond a broad disclosure of categories of suitable materials.
(G) The existence of working examples:
There are no examples in the instant specification that provide details as to how the materials described are used in a process to form a thermoelectric transducer with the capability to perform the functions claimed.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure: The Applicant has not enabled one of ordinary skill in the art at the time of the invention to produce the invention. Therefore, an undue level of experimentation would be required for one of ordinary skill in the art at the time of the invention to produce the specifics of the claimed invention. One of ordinary skill in the art at the time the invention was filed would be required to perform an undue level of experimentation to determine which material combinations to use, and to determine the appropriate dimensions/parameters in order for the thermoelectric transducer to perform the functions described.
In light of the above considerations, the applicant has not enabled one of ordinary skill in the art to make and/or use the claimed invention.
Claim 31 is 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, line 3 of claim 31 recites “an opaque protective resin,” however, the as-filed specification does not describe an opaque protective resin.
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.
Claims 24, 26-30 and 32-33 are rejected under 35 U.S.C. 103 as being unpatentable over Beretich (US 2008/0083444) in view of Kuo et al. (US 2009/0272418) as evidenced by Backhaus-Ricoult (US 2010/0147348).
Regarding claim 24, Beretich discloses a thermoelectric device composed of solid materials ([0083]; abstract). With regard to the limitation “configured to transfer a variation of an internal resistance corresponding to the thermoelectric device to a circuit in which the thermoelectric device is installed, wherein the thermoelectric device is regulated both by a potential difference corresponding to an electrical source that feeds the circuit and heat surrounding the thermoelectric device; and transform the heat surrounding the thermoelectric device into electric current, the electric current increasing a voltage and an intensity that the thermoelectric device receives from the electrical source that feeds the circuit;” the limitation is directed to the manner in which the apparatus 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. Beretich further discloses a core ([0087] discloses conductors used for 20; [0087] further discloses donor material 21 including chromium oxide; [0087] discloses other compounds including metal oxides at the interface between 20 and 21) connected to a pair of discharge electrodes, the pair of electrodes including a segment of conductive metals connected to each other in series one after the other (abstract discloses metal layers which serve and the anode and cathode); wherein the core includes deposition of a layer of a metal oxide on a transition metal ([0087]).
Beretich does not explicitly disclose the conductive metals are different.
Kuo discloses a thermoelectric device and further discloses the anode and cathode made of different conductive metals ([0007]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the anode and cathode of Beretich with different conductive metals, as disclosed by Kuo, because as evidenced by Kuo, using different conductive metals for the formation of the anode and cathode of a thermoelectric device amounts to the use of known materials 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 forming the anode and cathode of Beretich with different conductive metals based on the teaching of Kuo.
With regard to the limitation “the metal oxide being semiconducting,” as evidenced by Backhaus-Ricoult, the disclosed titanium oxide is semiconducting ([0035]).
With regard to the limitation “discharge or drain;” the limitation is directed to the manner in which the apparatus 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.
With regard to the limitations “two materials that form a non-ohmic electronic union” and “the transition metal being non-synthesized, non-radioactive, or non-toxic in nature and including an atom, wherein the atom includes an incomplete sub-layer or wherein the atom is capable of giving rise to cations with an incomplete sub layer;” when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of
either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 26, modified Beretich discloses all the claim limitations as set forth above. Modified Beretich further discloses the metal oxide and the transition metal that make up the core constitute a cathode and an anode of the thermoelectric device (Beretich – the metal oxides and the transition metals disclosed in paragraph [0087] satisfy the limitations “anode” and “cathode” because the limitations “anode” and “cathode” are directed to the manner in which the apparatus 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), wherein the cathode is connected to one of the pair of electrodes (a connection necessarily exists with one of the pair of electrodes; it is noted that the limitation “is connected” does not require direct physical contact or the absence of intermediate components); the anode is connected to one of the electrodes (a connection necessarily exists with one of the pair of electrodes; it is noted that the limitation “is connected” does not require direct physical contact or the absence of intermediate components); the pair of electrodes are separated from each other (Beretich – the abstract discloses two layers sandwiched between the anode and cathode).
With regard to the limitation “discharge or drain;” the limitation is directed to the manner in which the apparatus 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 27, modified Beretich discloses all the claim limitations as set forth above.
With regard to the limitation “each of the one or more segments of different conductive metals that make up each discharge or drain electrode in the pair of discharge or drain electrodes has a corresponding thermal conductivity, a corresponding absolute Seebeck coefficient, and a corresponding relative polarity,” when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Additionally, regarding the limitation “one or more interactions of each of the discharge or drain electrodes do not change with external temperature; and the most positive of the one or more segments of different metals are interspersed connecting each of the one or more segments of different conductive metals in series one after the other, with the most negative of the one or more segments of different metals, to generate a cascade potential difference and generate a descending chain of thermal gradients along each of the discharge or drain electrodes;” the limitation is directed to the manner in which the apparatus 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 28, modified Beretich discloses all the claim limitations as set forth above.
With regard to the limitation “the metal oxide and the transition metal that make up the core each have a respective work function, regardless of a temperature corresponding to the thermoelectric device;” when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 29, modified Beretich discloses all the claim limitations as set forth above.
With regard to the limitation “wherein between the metal oxide and the transition metal, the one that has the least work function is a cathode of the thermoelectric device;” the limitation is directed to the manner in which the apparatus 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 30, modified Beretich discloses all the claim limitations as set forth above.
With regard to the limitation “wherein between the metal oxide and the transition metal, the one that has the greatest work function is an anode of the thermoelectric device;” the limitation is directed to the manner in which the apparatus 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 32, modified Beretich discloses all the claim limitations as set forth above. Modified Beretich further discloses the thermoelectric device does not require a thermal gradient (the limitation is necessarily satisfied because the disclosed thermoelectric device does not require a thermal gradient).
It is further noted that the limitation “wherein the thermoelectric device does not require a thermal gradient” is directed to the manner in which the apparatus 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 33, modified Beretich discloses all the claim limitations as set forth above. Modified Beretich further discloses the thermoelectric device does not require a thermal gradient (the limitation is necessarily satisfied because the disclosed thermoelectric device does not require a thermal gradient).
It is further noted that the limitation “wherein the thermoelectric device does not require a thermal gradient” is directed to the manner in which the apparatus 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.
Claim 31 is rejected under 35 U.S.C. 103 as being unpatentable over Beretich (US 2008/0083444) in view of Kuo et al. (US 2009/0272418) as evidenced by Backhaus-Ricoult (US 2010/0147348) as applied to claim 28 above, and further in view of Watanabe (US 2019/0019934).
Regarding claim 31, modified Beretich discloses all the claim limitations as set forth above.
Modified Beretich does not explicitly disclose the metal oxide and the transition metal that make up the core are coated with an opaque protective resin resistant to thermal degradation.
Watanabe discloses a thermoelectric device and further discloses a protection layer made of acrylic-based resin, urethane-based resin, epoxy-based resin, polyolefin-based resin, as well as other types of resin ([0072]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to include a protection layer in the thermoelectric device of modified Beretich made of any of the resins disclosed by Watanabe, because as evidenced by Watanabe, the use of a protective layer made of resin amounts to the use of a known material in the art for its intended purpose to achieve an expected result, and one of ordinary skill would have a reasonable expectation of success when including a protective layer made of resin in the thermoelectric device of modified Beretich based on the teaching of Watanabe.
Response to Arguments
Applicant's arguments filed 10/06/2025 have been fully considered but they are not persuasive. Specifically, Applicant argues that the cited references fail to disclose a structure of a metal oxide deposited on a transition metal producing an incomplete outer sub-layer with cationic states that creates a non-ohmic union; serially segmented discharge/drain electrodes arranged to create a cascade Seebeck profile.
In response to Applicant’s argument, it is noted that while claim 24 does recite,
“wherein the thermoelectric device further comprises a core connected to a pair of discharge or drain electrodes, the pair of discharge or drain electrodes including one or more segments of different conductive metals connected to each other in series one after the other, wherein the core includes: two materials that form a non-ohmic electronic union by deposition of a layer of a metal oxide on a transition metal, the metal oxide being semiconducting; and the transition metal being non-synthesized, non-radioactive, or non-toxic in nature and including an atom, wherein the atom includes an incomplete sub-layer or wherein the atom is capable of giving rise to cations with an incomplete sub layer,” the claim(s) do not recite “serially segmented discharge/drain electrodes arranged to create a cascade Seebeck profile.” It is further noted that the claim(s) do not recite a metal oxide deposited on a transition metal producing an incomplete outer sub-layer with cationic states that creates a non-ohmic electronic union. Instead, the claims recite “two materials that form a non-ohmic electronic union by deposition of a layer of a metal oxide on a transition metal.”
As set forth in the office action, with regard to the limitations “two materials that form a non-ohmic electronic union” and “the transition metal being non-synthesized, non-radioactive, or non-toxic in nature and including an atom, wherein the atom includes an incomplete sub-layer or wherein the atom is capable of giving rise to cations with an incomplete sub layer;” when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
As set forth in the office action, Beretich further discloses a core ([0087] discloses conductors used for 20; [0087] further discloses donor material 21 including chromium oxide; [0087] discloses other compounds including metal oxides at the interface between 20 and 21) connected to a pair of discharge electrodes, the pair of electrodes including a segment of conductive metals connected to each other in series one after the other (abstract discloses metal layers which serve and the anode and cathode); wherein the core includes deposition of a layer of a metal oxide on a transition metal ([0087]).
Conclusion
Applicant's amendment necessitated the 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).
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