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 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, 5-9, and 17-20 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 14 and 15 of claim 1 recite “wherein the second groove is disposed parallel to an opposite side surface facing the one side surface of the first substrate,” however, the manner in which an opposite side surface faces the one side surface of the first substrate is unclear. For the purpose of this office action, the claim will be treated as if it requires an opposite side surface of the first substrate. Claims 5-9 and 17-20 are rejected due to their respective dependence on claim 1.
Claims 10 and 14 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 and 18 of claim 10 recite “wherein the second groove is disposed parallel to an opposite side surface facing the one side surface of the first substrate,” however, the manner in which an opposite side surface faces the one side surface of the first substrate is unclear. For the purpose of this office action, the claim will be treated as if it requires an opposite side surface of the first substrate. Claim 14 is rejected due to its dependence on claim 10.
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, 5-7, 9, and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Wakabayashi et al. (WO 2021132006 A1 – see English language equivalent US 2023/0048566) in view of Himmer (US 2015/0171302).
Regarding claim 1, Wakabayashi discloses a thermoelectric device (Fig. 13; [0145]) comprising: a support including a first groove and a second groove disposed to be spaced apart from each other in one surface thereof (shown in annotated Fig. 13 below); a thermoelectric module disposed between the first groove and the second groove on the one surface of the support ([0139]; 20 in Fig. 13); a first sealing member and a second sealing member disposed in the first groove and the second groove, respectively, and spaced apart from the thermoelectric module (96 in relation to 20 in Fig. 13; [0196]); and a shield member disposed on the one surface of the support (shown in annotated Fig. 13 below), wherein the thermoelectric module includes a first substrate disposed on the one surface of the support (23 in Fig. 13), a semiconductor structure disposed on the first substrate (22 on 23 in Fig. 13; [0145]), a second substrate disposed on the semiconductor structure (21 in Fig. 13), and a heat sink disposed on the second substrate (60 in Fig. 13; it is noted that the limitation “disposed on” does not require direct physical contact or the absence of intermediate components; it is further noted that the limitation “heat sink” is directed to the manner in which the apparatus is intended to be used, and member 60 in Fig. 13 has the capability to function as a heat sink), wherein the first groove is disposed parallel to one side surface of the first substrate (first groove as depicted in annotated Fig. 13 below in relation to side surface of 21), wherein the second groove is disposed parallel to an opposite side surface of the first substrate (second groove as depicted in annotated Fig. 13 below in relation to opposite side surface of 21), wherein the shield member includes a through hole through which the heat sink is exposed (71 in Fig. 13 in relation to 60), and an edge of the through hole is disposed on the second substrate (edge of 71 in Fig. 13 on 23; it is noted that the limitation “disposed on” does not require direct physical contact or the absence of intermediate components), and wherein one side of the shield member is disposed in direct contact with the first sealing member in the first groove, and an opposite side of the shield member is disposed in direct contact with the second sealing member in the second groove (96 in first and second grooves in relation to shield member as annotated in Fig. 13 below).
Wakabayashi does not explicitly disclose a first electrode disposed on the first substrate, and a second electrode disposed on the semiconductor structure.
Himmer discloses a thermoelectric device (abstract) and further discloses a first electrode disposed on a first substrate (7 in Fig. 27), and a second electrode disposed on a thermoelectric structure (7 on 6 in Fig. 27).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to include first and second electrodes, as disclosed by Himmer, in the thermoelectric device of Wakabayashi, because as evidenced by Himmer, the use of electrodes in a thermoelectric 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 electrodes in the thermoelectric device of Wakabayashi based on the teaching of Himmer.
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Regarding claim 5, modified Wakabayashi discloses all the claim limitations as set forth above. Modified Wakabayashi further discloses the first groove and the one side surface of the first substrate are spaced apart from each other, and wherein the second groove and the opposite side surface of the first substrate are spaced apart from each other (Wakabayashi – side surfaces of 21 in relation to respective first and second grooves as depicted in annotated Fig. 13 above).
Regarding claim 6, modified Wakabayashi discloses all the claim limitations as set forth above.
While modified Wakabayashi does not explicitly disclose a ratio of a depth of the first groove to a distance between the one side surface of the first substrate and the first groove is in a range of 8.75 and 11.42; it would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the first groove such that a ratio of a depth of the first groove to a distance between the one side surface of the first substrate and the first groove is in a range of 8.75 to 11.42 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).
Regarding claim 7, modified Wakabayashi discloses all the claim limitations as set forth above.
While modified Wakabayashi does not explicitly disclose a ratio of a width of the first groove to a distance between the one side surface of the first substrate and the first groove is in a range of 1.84 to 2.5; it would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the first groove such that a ratio of a width of the first groove to a distance between the one side surface of the first substrate and the first groove is in a range of 1.84 to 2.5 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).
Regarding claim 9, modified Wakabayashi discloses all the claim limitations as set forth above.
While modified Wakabayashi does not explicitly disclose a ratio of a distance between an edge of the support and the first groove to a depth of the first groove is 0.61 or more; it would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the first groove such that a ratio of a distance between an edge of the support and the first groove to a depth of the first groove is 0.61 or more 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).
Regarding claim 17, modified Wakabayashi discloses all the claim limitations as set forth above.
While modified Wakabayashi does not explicitly disclose a distance between one side surface of the first substrate and the first groove differs from a distance between the opposite side surface of the first substrate and the second groove; it would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the first and second grooves such that a distance between one side surface of the first substrate and the first groove differs from a distance between the opposite side surface of the first substrate and the second groove 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).
Regarding claim 18, modified Wakabayashi discloses all the claim limitations as set forth above. Modified Wakabayashi further discloses a connector disposed on the first substrate, wherein the opposite side surface of the first substrate is disposed between the connector and the second groove (Wakabayashi – [0145] discloses ML1 which satisfies the limitation “connector.” It is noted that ML1 is necessarily disposed on the first substrate, and the opposite side surface of 21 is between ML1 and the second groove depicted in annotated Fig. 13. It is further noted that the limitation “disposed on” does not require direct physical contact or the absence of intermediate components).
Regarding claim 19, modified Wakabayashi discloses all the claim limitations as set forth above.
While modified Wakabayashi does not explicitly disclose the distance between the opposite side surface of the first substrate and the second groove is greater than the distance between the one side surface of the first substrate and the first groove; it would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the first and second grooves such that a distance between the opposite side surface of the first substrate and the second groove is greater than the distance between the one side surface of the first substrate and the first groove 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).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Wakabayashi et al. (WO 2021132006 A1 – see English language equivalent US 2023/0048566) in view of Himmer (US 2015/0171302) as applied to claim 1 above, and further in view of Park et al. (US 6,574,967).
Regarding claim 20, modified Wakabayashi discloses all the claim limitations as
set forth above.
Modified Wakabayashi does not explicitly disclose the first sealing member and
the second sealing member include a silicone resin or an epoxy resin.
Park discloses a thermoelectric device and further discloses sealing members including an epoxy resin (C6/L63-57).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the sealing members of modified Wakabayashi with epoxy resin, as disclosed by Park, because as evidenced by Park, the use of epoxy resin as a sealing member in a thermoelectric device 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 using epoxy resin as the sealing member(s) in modified Wakabayashi based on the teaching of Park.
Allowable Subject Matter
Claim 8 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. Claim 8 requires a flow path through which a fluid flows is disposed in the support, however, the prior art alone or in combination, does not disclose this limitation in conjunction with the limitations recited in claims 1 and 5 from which claim 8 depends.
Claim 10 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action. Claim 10 requires a fluid flow part including one surface and an opposite surface spaced apart from the one surface in a first direction and including a first groove and a second groove disposed to be spaced apart from each other in the one surface, wherein each of the thermoelectric modules includes a first substrate disposed on the one surface of the fluid flow part, wherein the shield member includes through holes through which the heat sink is exposed, however, the prior art, alone or in combination, does not disclose these limitations in conjunction with the other limitations recited in claim 10.
Claim 14 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. It is noted that claim 14 is dependent on claim 10.
Response to Arguments
Applicant’s arguments with respect to claims 1, 5-10, 14, and 17-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
It is noted that the claim amendments overcome the 112 rejections set forth in
the previous office action. However, the claims presented are rejected under 112(b) as set forth above.
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 TAMIR AYAD whose telephone number is (313) 446-6651. The examiner can normally be reached Monday - Friday, 8:30am - 5pm EST.
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/TAMIR AYAD/Primary Examiner, Art Unit 1726