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 Objections
Claims 5-6 are objected to because of the following informalities: use of the term "comprising comprises". It appears as though the applicant intended to change the word “comprises” to “comprising” but failed to delete the term “comprises” from the claims. Appropriate correction is required.
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.
Claim(s) 1-5, 7-14, 16-17 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jang et al. ("Thermoelectric Performance Enhancement of Naturally Occurring Bi and Chitosan Composite Films Using Energy Efficient Method", Electronics, 3/23/2020, No. 532, pp. 1-12) in view of Madan et al. (“High Performance Dispenser Printed MA p-Type Bi0.5Sb1.5Te3 Thermoelectric Generators for Powering Wireless Sensor Networks” Applied Materials and Interfaces, 2013, No 5, pp. 11872-11876) .
Regarding claims 1, 3, 17 and 20, Jang teaches drop-cast a TE ink (see abstract) so as to create a composite film having a ZT near that claimed (see last paragraph before Conclusions) range. Further Jang teaches that the composition comprises bismuth and chitosan wherein the amount of chitosan binder used in the composition reads on the range of claim 1. Jang fails to teach the provision of a ZT in the range claimed. However, Jang also teaches that there are numerous pathways to improving ZT including “doping and structural methods” (see Introduction). Therefore in the absence of criticality of the specific ZT range of the current claims it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the ZT of the composition of Jang by doping or by structural methods as guided by Jang. . Jang fails to teach wherein the TE material further comprises telluride (tellurium) However, Madan teaches that it is known to use Bi0.5Sb1.5Te3 as a thermoelectric material, wherein as taught by Jang, bismuth is doped with two materials (telluride and antimony) in order to control ZT, electrical and thermal properties of the produced thermoelectric product (see Conclusions). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to replace the Bi of Jang with the Bi0.5Sb1.5Te3 of Madan as a simple substitution of one known thermoelectric material for another wherein the results would be predictable and one would be motivated to do this for the purpose of controlling the ZT, electrical and thermal properties of the product of Jang.
Regarding claim 2, Jang teaches that pressing, as applied by Jang is known in provide “more contact between active particles”, implying the presence of TE-particle-TE-particle interfaces (see Introduction, third from last paragraph) wherein defining the composition as a chitosan composite film necessarily provides for the presence of TE particle-chitosan polymer interfaces.
Regarding claim 4, Jang further shows the use of a heterogenous size distribution of TE particle employed (Fig.1) wherein the particles would be considered p-type particles (see Madan, title).
Regarding claim 5, Madan teaches that BST is a known p-type material (see Introduction).
Regarding claim 7, Jang further teaches wherein the particles employed may be 200 mesh (Fig. 1), effectively reading upon the claimed range.
Regarding claim 8, because Jang teaches the heterogenous size distribution as discussed above and pressing, it is inherent that packing of smaller particles in voids between smaller particle would take place.
Regarding claim 9, Jang teaches wherein the TE film is formed on a substrate (see Method, para. 1).
Regarding claim 10, the invention of Jang is described as “flexible” (see abstract), wherein the substrate is therefore reasonably implied as being flexible as well as the film present thereon.
Regarding claims 11-12, Jang further teaches wherein the substrate may comprise Kevlar (see Method, para. 1).
Regarding claims 13-14, Jang further teaches wherein the Kevlar is coated with chitosan as cited above.
Regarding claim 16, Jang teaches a binder to weight ratio of particles reading upon the claimed range as relates to the use of 200mesh Bi (see Fig. 1).
Claim(s) 1 and 6 is are rejected under 35 U.S.C. 103 as being unpatentable over Jang et al. ("Thermoelectric Performance Enhancement of Naturally Occurring Bi and Chitosan Composite Films Using Energy Efficient Method", Electronics, 3/23/2020, No. 532, pp. 1-12) in view of Madan et al. (“Printed Se-Doped Man-type Bi2Te3 Thick-Film Thermoelectric Generators”, Journal of Electric Materials, Vol. 41, No. 6, 2012, pp. 1481-1486)(cited here as Madan2).
Regarding claims 1 and 6, Jang teaches drop-cast a TE ink (see abstract) so as to create a composite film having a ZT near that claimed (see last paragraph before Conclusions) range. Further Jang teaches that the composition comprises bismuth and chitosan wherein the amount of chitosan binder used in the composition reads on the range of claim 1. Jang fails to teach the provision of a ZT in the range claimed. However, Jang also teaches that there are numerous pathways to improving ZT including “doping and structural methods” (see Introduction). Therefore in the absence of criticality of the specific ZT range of the current claims it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the ZT of the composition of Jang by doping or by structural methods as guided by Jang. . Jang fails to teach wherein the TE material further comprises telluride (tellurium) and Se. However, Madan2 teaches that it is known to use Bi2Te3 doped with 2% Se additive as a thermoelectric material, wherein as taught by Jang, bismuth is doped with two materials (telluride and Se) in order to control ZT, electrical and thermal properties of the produced thermoelectric product (see Conclusions). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to replace the Bi of Jang with the Bi2Te3 doped with 2% Se additive of Madan2 as a simple substitution of one known thermoelectric material for another wherein the results would be predictable and one would be motivated to do this for the purpose of controlling the ZT, electrical and thermal properties of the product of Jang.
Allowable Subject Matter
Claim 19 is allowed.
Claims 15 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: it is not known in the prior art to provide a modified thermoelectric (TE) composite film comprising at least one TE material in a chitosan polymer binder, wherein the at least one TE material comprises bismuth and tellurium, wherein the amount of chitosan present in the modified TE composite film is in a range from greater than zero to less than about 1 wt% , and wherein the modified TE composite film has a figure of merit (ZT) in a range of at least about 0.5 to 1.0, wherein the modified TE composite film is on a substrate, further comprising a coating between the substrate and the modified TE composite film wherein the coating comprises gold as in claim 15 or to
Provide a modified thermoelectric (TE) composite film comprising at least one TE material in a chitosan polymer binder, wherein the at least one TE material comprises bismuth and tellurium, wherein the amount of chitosan present in the modified TE composite film is in a range from greater than zero to less than about 1 wt%, wherein the modified TE composite film has a figure of merit (ZT) in a range of at least about 0.5 to 1.0, and wherein the modified TE composite film is on a substrate with a gold coating positioned between the substrate and the modified TE composite film as in claim 19.
The most pertinent prior art (cited above as Jang et al., one of the inventors of the current application) teaches that it is known to form TE composite films similar to those claimed but only mentions the use of chitosan as a coating material between the TE composite film and the substrate, wherein gold and chitosan are not generally considered to be obvious variants of one another in this field of endeavor.
Another prior art (cited above as Madan et al., also one of the inventors above) similar teaches the formation of TE composite films but fails to teach the use of gold layers present on substrates comprising said TE composite films.
Response to Arguments
The examiner stated reasons why it would be considered obvious to modify the ZT of the material of Jang using doping as is done in Madan although the combination of Jang in view of Madan fails to cite the ZT claimed. The applicant attempted to overcome the rejection by showing the criticality of the range claimed wherein the applicant states that “there exists a criticality to the claimed ZT ranges given how difficult they are to achieve”. In general, the manner in which the applicant has approached the showing of criticality is not the standard previously provided by the Courts. MPEP 2144.05, Section II, Subsection states that applicants can rebut a prima facie case of obviousness by showing the criticality of the range. “The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.” In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Therefore it is not a question of difficulty of obtaining the ZT claimed that would establish that ZT as critical. It is a question of what new and unexpected result arises from the ZT provided. The applicants’ arguments related to unexpected results are generally not drawn to this question. Further even within the document cited in Table 1 of the affidavit, the applicant shows that the ZT that they would presumably be arguing as new and unexpected is already known in the prior art. A showing of the criticality of the range as being unexpected must be accompanied by a showing of criticality consistent with the legal standard applied.
As relates to a showing of criticality, the closest statement that the applicant provides as to why the range is critical is the statement that BST-epoxy composite doped with 8% Te is not suitable for use in “low-waste heat application”. However, this statement is largely unsubstantiated. Seemingly implicit in the argument is that the BST-epoxy composite wastes large amounts of heat compared to another more preferred material. However, this argument is seemingly more appropriately provided as one arguing that the heat-waste of the current invention is not critical but rather optimized versus what was provided in the prior art, which is the basis of the rejection provided as well.
The applicant further states that the goal of the invention of Jang is to provide a TE composite film comprising Bi that is close to that of bulk Bi. While this is a possible way of stating the goal of Jang, possibly a more appropriate or detailed explanation is that Jang attempts to form “flexible” TE materials having high figures of merit (ZT). In Jang, the “best performing” sample formed had an order of merit that was double that of the bulk material (abstract). As such, Jang does not target the ZT of the bulk material. Seemingly if this were the target, Jang would just employ the bulk material. Jang targets a flexible material (which is why chitosan is present as a binder) that has a high ZT, which is the reason for forming a composite of the flexible material and the high ZT material. Therefore Jang teaches that providing chitosan (polymer) as a composite binder for the formation of flexible TE materials is known where the Bi material is including as a dopant to increase the ZT. Madan on the other hand shows that BST is a known dopant that may also be added to epoxy based composite binders (polymer based) wherein BST is also added to increase the ZT of the composite material thereby providing a flexible TE material. As such, the combination of a known TE material that is shown to provide increased ZT to polymer based composites applied to a different polymer composite would be a reasonable path to pursue in attempting to provide flexible materials with increased ZT as argued by the examiner. It is not a question of whether or not the prior art combination targeted the bulk ZT of the TE material employed. Jang does not seemingly do that even though it is argued by the applicant. The question is whether or not one would expect BST to function with chitosan in a similar improving manner as Bi performed with chitosan, wherein the logical conclusion would be that both BST and the material of Jang would be expected to modify ZT of chitosan in a similar fashion to the way that Jangs TE material modifies his chitosan. Specifically it is not a requirement of the prior art that they pursue the bulk ZT of the TE dopant even if the current application does. Reasonably the applicant must show why the proposed BST/chitosan composite of Jang in view of Madan would not perform in the same manner as the composition claimed herein.
Conclusion
THIS ACTION IS MADE FINAL. 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 ANDREW J BOWMAN whose telephone number is (571)270-5342. The examiner can normally be reached Mon-Sat 5:00AM-11:00AM.
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/ANDREW J BOWMAN/Examiner, Art Unit 1717
/ROBERT S WALTERS JR/Primary Examiner, Art Unit 1717
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