DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The amendments filed July 27, 2023 have been entered. Accordingly, claims 1-20 are currently pending.
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.
Claims 1-6 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shkolnikov et al. (US20080029624A1).
In re Claim 1, Shkolnikov discloses a system (Fig. 4) comprising:
a vortex tube (34; [0028]: a Ranque-Hilsch vortex tube) including:
an inlet (36) configured to receive compressed gas (See Fig.4 and [0029]: compressed gas stream) from a compressed gas source (Fig. 4: compressed gas source);
a spin chamber (Annotated Fig. 5: spin chamber; cross section black below inlet 36) in fluid communication with the inlet (36) and configured to receive a flow of compressed gas from the inlet (36) and to impart spin on the flow of compressed gas (See [0028-0029]: a Ranque-Hilsch vortex tube necessarily receive a flow of compressed gas from the inlet (36) and to impart spin on the flow of gas);
a first outlet (32) in fluid communication with the spin chamber (cross section black below inlet 36), configured to discharge a cooled portion of the flow of gas ([0029]: outlet 32 of vortex tube 34 necessarily discharges a cooled portion of the flow of gas); and
a second outlet (30) in fluid communication with the spin chamber (cross section black below inlet 36), and configured to discharge a heated portion of the flow of compressed gas ([0029]: hot gas outlet port 30 necessarily discharges a heated portion of the flow of gas);
a first thermoelectric terminal (end of thermoelectric generator 20 connected to 44; See [0036]) in thermal communication with the first outlet (32);
a second thermoelectric terminal (end of thermoelectric generator 20 connected to 42; See [0036]) in thermal communication with the second outlet (30); and
an electrical circuit (170) electrically connected to the first thermoelectric terminal and to the second thermoelectric terminal (the electrical output terminals 150+ and 150− of thermoelectric generator 20 or 120 may be coupled to input terminals of suitable power conditioning equipment 170) for electrical conduction of Peltier-effect thermoelectric current ([0028], [0032], and [0036]).
In re Claim 2, Shkolnikov discloses wherein the electrical circuit (170) is configured to harvest energy from heat flux at the first and second thermoelectric terminals ([0005-0008] and [0036]).
In re Claim 3, Shkolnikov discloses wherein the electrical circuit (170) is electrically connected to an electric power consuming system (22).
In re Claim 4, Shkolnikov discloses wherein the electrical circuit (170) is electrically connected to an electrical energy storage (the electrical output terminals 150+ and 150− ; See [0036]).
In re Claim 5, Shkolnikov discloses wherein the electrical circuit (170) is configured to supply power (the electrical output terminals 150+ and 150− ; See [0036]) to drive heat flux at the first and second thermoelectric terminals ([0036]).
In re Claim 6, Shkolnikov discloses wherein the electrical circuit (Fig. 4) is electrically connected to a source of electrical power (the electrical output terminals 150+ and 150− ).
In re Claim 15, Shkolnikov discloses wherein an expansion nozzle (See Annotated Fig. 5: expansion nozzle) is defined between the spin chamber (Annotated Fig. 5: spin chamber) and the first outlet (32) for cooling expanded gas, and wherein the second outlet (30) is configured to exhaust reciprocal heated gas ([0029-0030]: necessarily exhausts reciprocal heated gas) from the vortex tube (34).
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 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.
Claims 9-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shkolnikov et al. (US 20080029624 A1) in view of Jeon (US 20160155921 A1).
In re Claim 9, Shkolnikov does not explicitly teach, wherein the first thermoelectric terminal (end of thermoelectric generator 20 connected to 44) includes a first thermoelectric junction of dissimilar metals, wherein the second thermoelectric terminal (end of thermoelectric generator 20 connected to 44) includes a second thermoelectric junction of dissimilar metals.
On the other hand, Jeon teaches a first thermoelectric junction (tip A) of dissimilar metals ([0007]: different metal type bonded), and a second thermoelectric junction (tip B) of dissimilar metals ([0007]: different metal type bonded).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have taken the teachings of Shkolnikov and to have modified them by having the first thermoelectric terminal of Shkolnikov include a first thermoelectric junction of dissimilar metals as taught by Jeon, wherein the second thermoelectric terminal of Shkolnikov include a second thermoelectric junction of dissimilar metals of Jeon, in order to directly convert heat into electricity without a mechanical driving unit (See Jeon [0007-0008]), without yielding unpredictable results.
In re Claim 10, Modified Shkolnikov teaches wherein the first thermoelectric junction of dissimilar metals (Jeon A) includes a first metallic material (Jeon [0007]) of the first outlet (Shkolnikov 32) joined to a second metallic material (Jeon [0007]) of the vortex tube (34).
In re Claim 11, Modified Shkolnikov teaches wherein the second thermoelectric junction of dissimilar metals (Jeon tip B) includes a third metallic material ([0008]: a middle section of a metal) of the second outlet (Shkolnikov 30) jointed to the second metallic material (Jeon tip B; [0007]: second metallic material of B) of the vortex tube (34).
In re Claim 12, Modified Shkolnikov teaches wherein the first metallic material (Jeon [0007]) and the second metallic material (Jeon [0007]) are joined together at an additively manufactured interface (Jeon [0007]: two different metal types are bonded), including a single crystal structure boundary devoid of a heat effected zone (Jeon [0007]: one metal rod of different metals, i.e., they are not soldered together).
In re Claim 13, Modified Shkolnikov teaches wherein the third metallic material (Jeon [0008]: a middle section of a metal) and the second metallic material (Jeon B; [0007]: second metallic material of tip B) are joined together at an additively manufactured interface ([0008]), including a single crystal structure boundary devoid of a heat effected zone ([0007]: one metal rod of different metals, i.e., they are not soldered together).
In re Claim 14, Modified Shkolnikov teaches wherein the first, second, and third metallic materials are a single monolithic structure (Jeon [0007]: one metal rod).
Response to Arguments
The Remarks of February 4, 2026, have been fully considered but are not persuasive for the reasons below.
Applicant argues
On Page 9¶1 of the Remarks, that the examiner has not shown that claims 1 are anticipated by Shkolnikov because there is allegedly no basis in the prior art for a system that includes a vortex tube, where the vortex tube includes a first thermoelectric terminal in thermal communication with a first outlet of the vortex tube and a second thermoelectric terminal in thermal communication with a second outlet of the vortex tube as required by the claims. Applicant appears to suggest that one of ordinary skill in the art would not recognize from the teaching of Shkolnikov that the first and second thermoelectric terminals of Shkolnikov are components of a thermoelectric module that is separate from the vortex tube. This is not persuasive.
The Examiner respectfully disagrees with Applicant’s characterization of Shkolnikov. Contrary to Applicant' s assertion that the thermoelectric module and vortex tube are separate, Shkolnikov does in fact indicate that a thermoelectric module that is connected to the vortex tube. Specifically, by connecting the vortex tube 34 of Shkolnikov to 44 the vortex tube is connected to the thermoelectric module and its terminals1. One of ordinary skill in the art would reasonably expect that a vortex tube of Smith, which is coupled to the thermoelectric module, is in thermal communication with a first outlet of the vortex tube and a second thermoelectric terminal in thermal communication with a second outlet of the vortex tube as required by the claims. Therefore, the rejection is maintained.
Since Shkolnikov teach or suggest all the limitations of Claim 1, applicant’s remaining arguments are moot as the rejection of Claim 1 is maintained and additional arguments are not presented in regards to Claims 9-14.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IBRAHIM M ADENIJI whose telephone number is (571)272-5939. The examiner can normally be reached 8:00-5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jianying Atkisson can be reached at 571-270-7740. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IBRAHIM A. MICHAEL ADENIJI/Examiner, Art Unit 3763
/JOEL M ATTEY/Primary Examiner, Art Unit 3763
1 See Shkolnikov [0033-0034]
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