DETAILED ACTION
Terminology
The specification ¶[0060]1 teaches “internal stress” of the magnetic body is known as “residual stress” and denoted by σ. The terms will be understood as synonymous.
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.
Claims 1-18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a magnetic body having an internal stress of e.g., -2000 MPa or -1000 MPa (¶[0021]), it does not reasonably provide enablement for a range with no lower bound, i.e., “900 MPa or less”. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make or use the invention commensurate in scope with these claims, which would include compressive (negative) internal stresses such as -10,000 MPa, -1010 MPa or even an infinite compressive stress.
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.
Claims 1-18 are rejected under 35 U.S.C. 112(b), 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.
In claim 1, “wherein the magnetic body has an internal stress of 900 MPa or less” is indefinite in scope.
The term “internal stress” refers to “stress inherent within the magnetic bodies themselves” where “if the value of internal stress is positive, the internal stress is a tensile stress; if the value of internal stress is negative, the internal stress is a compressive stress.” 2 The “internal stress” is distinguished from the bending stress which is a stress applied externally, e.g., when the body is in a high temperature or high humidity environment. Internal stress is described as either a positive or negative value corresponding to a tensile or compressive stress, respectively (¶[0017]).
It is further noted that in the thin-film art, “internal stress” σ is more precisely defined as the algebraic sum of thermal or extrinsic stress σ(T) and intrinsic stress σi. Internal stress σ is distinct from intrinsic stress σi . Internal stress is the more inclusive term and includes the unavoidable thermal or extrinsic stress, σ(T), in addition to σi. The magnitude of the internal stress is expressed by the algebraic sum of both contributions or σ = σ(T) + σi.3 Thermal or extrinsic stress occurs when the body is in a “high temperature environment” during manufacture, e.g., when the film is prepared at elevated temperatures and thereafter cooled.4, 5
It is also known in the thin-film art that “[w]hen films are exposed to elevated temperatures or undergo relatively large temperature excursions, internal stresses frequently relax by time-dependent deformation processes induced by thermally activated motion of atoms and defects. As a result, defect concentrations are altered, film surface topography can change, and stress as well as strain magnitudes may be reduced.” 6
Thus, the claimed range for internal stress is indefinite in scope because internal stresses in film materials are not stable and may relax during subsequent use. For example, the internal stress of a magnetic body at formation may lie outside the claimed range but relax after subsequent use to lie within the claimed range.
The claim is also indefinite because it is unclear if the lower limit of the range is zero or some other number, or if the range refers to absolute values of internal stress. The disclosure does not describe the range in terms of absolute values, e.g., it describes exemplary bodies with “-2000 MPa or more” or “-1000 MPa or more”(¶[0021]). The claimed range thus implies no limit for negative values for internal stress. Further, the absence of a limit encompasses a magnetic body with a compressive stress larger than that disclosed in the sense that, e.g., -10,000 MPa is less than 900 MPa, or even an infinite compressive stress.
Regarding claim 7, “width” lacks clear basis.
Regarding claim 14, it is unclear how measurement of the internal stress using the well-known sin2 ψ method further distinguishes the structure of claim 1.
Regarding claims 15-18, the claimed ranges for internal stress are indefinite for the same reasons given above with respect to claim 1.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Applicant’s admitted prior art in view of Abbas et al. (“Influence of Ar Pressure on the Magnetic Properties of Amorphous FeGaSiB Thin Films”, IEEE Transactions on Magnetics, vol.53, no.11, pp.1-4, Nov. 2017).
Regarding claim 1, the specification teaches prior art “Comparative Example 1” comprising a thermoelectric conversion element comprising:
a substrate (i.e., PET material of 50 μm); and
a magnetic body disposed on the substrate and having ferromagnetism or antiferromagnetism, wherein the magnetic body has an internal stress of 905 MPa (¶[0077]; Table 1).
Comparative Example 1 was obtained in the same manner as an Example 1 of the invention except that the argon gas was fed at a pressure of 1.6 Pa (¶[0077]) instead of a pressure of 0.5 Pa or less as desired (¶[0052]-¶[0053]) and thus the internal stress of the magnetic body of Comparative Example 1 exceeded 900 MPa (¶[0079]; Table 1).
But Abbas teaches deposition of amorphous FeSiB and FeGaSiB thin films for a range of Argon gas pressures of 4-8 μbar (corresponding to 0.4-0.8 Pa). It was found that for the FeSiB films, Hk (the anisotropy field proportional to the stress in the film per Eq.2) gradually increased as the sputtering pressure increased (p.3; Fig.3), thus leading to the conclusion that increasing the pressure increased the tensile stress within the films so that large intrinsic stresses dominated (Conclusions).
Thus, it would have been obvious before the effective filing date to reduce the pressure of the argon gas in production of Comparative Example 1 to at least 0.4 Pa since Abbas teaches this was known to reduce the intrinsic stress.
Regarding claim 2, the substrate of Comparative Example 1 has flexibility since it comprises PET material, the same as the invention Examples 1-3, for instance (Table 1).
Regarding claim 3, the flexible PET substrate of Comparative Example 1 comprises at least an organic polymer (inherent to PET).
Regarding claim 4, the substrate of Comparative Example 1 has a linear expansion coefficient of 1.0 x 10-5/°C or more (Table 1).
Regarding claim 5, the substrate of Comparative Example 1 comprises a thickness of 200 μm or less (Table 1).
Regarding claim 6, the magnetic body of Comparative Example 1 has a thickness of 1000 nm or less (Table 1).
Regarding claim 7, the magnetic body of Comparative Example 1 has a width of 500 μm or less (Table 1).
Regarding claims 8-11, in the combination, except for the noted differences, the thermoelectric conversion element of Comparative Example 1 was the same as Example 1 (¶[0077]). Thus, it follows the combination generates an electromotive force in a direction orthogonal to a thickness direction of the substrate when a temperature gradient occurs in the thickness direction of the substrate, is capable of generating an electromotive force by an magneto-thermoelectric (i.e., Nernst) effect, comprises a conductive path comprising the magnetic body, the conductive path forming a meander pattern, and has a line width of 500 pm or less in the meander pattern (¶[0066]).
Regarding claims 12-13, the magnetic body of Comparative Example 1 contains a substance having a composition represented by Fe3X, where X is a typical element or a transition element (¶[0077]), and wherein the substrate comprises at least an organic polymer (Table 1).
Regarding claim 14, the claimed method of measurement does not further structurally distinguish the apparatus, but to the extent it is given any weight, the Examiner takes official notice that X-ray diffraction according to a sin2 Ψ method is a well-known method for determining residual/intrinsic stress of thin films. 7, 8
Regarding claims 15 & 18, the combination, in particular Abbas, teaches a feed pressure of argon gas of as low as 4 μbar or 0.4 Pa (Fig.3), which by comparison with Example 3, for example, which has a feed pressure of 0.9 Pa and an internal stress of 473 MPa, would correspond to an internal stress of 500 MPa or less, or an internal stress of -500 MPa or more and 500 MPa or less. Per MPEP 2144.05, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990.
Regarding claims 16-17, while the combination does not explicitly teach the claimed ranges, this would have been obvious as a matter of optimization, in particular reducing the feed pressure of Abbas accordingly. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claims 1-4, 6, 8-10 & 12-18 are rejected under 35 U.S.C. 103 as being unpatentable over Nakatsuji et al. (US Pat.Pub.2022/0246820) in view of Tien et al. (“Evaluation of Electrical, Mechanical Properties, and Surface Roughness of DC Sputtering Nickel-Iron Thin Films” IEEE Transactions on Magnetics, Vol.50. No.7, pp 1-4. July 2014).
Regarding claim 1, Nakatsuji teaches a thermoelectric conversion element comprising: a substrate 22; and a magnetic body (thermoelectric conversion element exhibiting anomalous Nernst effect) 24 disposed on the substrate and having ferromagnetism or antiferromagnetism (e.g., Fe3X; abstract).
Nakatsuji does not specifically teach the magnetic body has an internal stress of 900 MPa or less.
But, Tien teaches an experiment where magnetic bodies (NiFe thin films) having ferromagnetism or antiferromagnetism (NiFe is a soft magnetic material) were disposed on substrates (e.g., silicon wafers) and where the magnetic bodies have an internal (residual) stress σ of 900 MPa or less, i.e., an average of -50 +/- 2 MPa (abstract). Tien’s NiFe thin films with low residual stress improve the mechanical performance of the coatings such as thermal cycling life and fatigue properties as well as the optical, electrical and magnetic behaviors of thin film devices due to cracking or interfacial de-laminations (p.1).
Thus, it would have been obvious before the effective filing date to provide Nakatsuji’s
magnetic body with an internal stress of 900 MPa or less since Tien teaches thin films with low residual stress in this range would have improved the mechanical performance of the coatings such as thermal cycling life and fatigue properties as well as the optical, electrical and magnetic behaviors of thin film devices due to cracking or interfacial de-laminations.
Regarding claim 2, Nakatsuji’s substrate, e.g., PET and polyimide, (¶[0144]) has inherent “flexibility”.
Regarding claim 3, Nakatsuji’s PET or polyimide substrate comprises at least an organic polymer (inherent to PET or polyimide).
Regarding claim 4, Nakatsuji’s PET or polyimide inherently has a linear expansion coefficient of 1.0 x 10-5/°C since it is the same material of Table 1.
Regarding claim 6, Nakatsuji’s body 24 has a thickness of 1000 nm or less (Table 1).
Regarding claims 8-10, Nakatsuji’s thermoelectric generator generates an electromotive force in a direction orthogonal to a thickness (z) direction of the substrate when a temperature gradient occurs in the thickness (x) direction of the substrate (Figs.2&26), is capable of generating an electromotive force by an magneto-thermoelectric (i.e., Nernst) effect (abstract), comprises a conductive path comprising the magnetic body, the conductive path forming a meander pattern (Fig.7).
Regarding claims 12-13, Nakatsuji’s magnetic body contains a substance having a composition represented by Fe3X, where X is a typical element or a transition element (abstract), and wherein the substrate comprises at least an organic polymer (i.e., PET or polyimide; ¶[0144]).
Regarding claim 14, the claimed method of measurement does not further structurally distinguish the apparatus, but to the extent it is given any weight, the Examiner takes official notice that X-ray diffraction according to a sin2 Ψ method is a well-known method for determining residual/intrinsic stress of thin films. 9, 10
Regarding claims 15-18, in the combination, Tien’s magnetic thin film has an internal stress of -50 +/- 2 MPa (abstract). Per MPEP 2144.05, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Nakatsuji & Tien, further in view of Sakuraba et al. (JP 2014-072256).
Nakatsuji & Tien do not teach the magnetic body has a width of 500 μm or less.
But, Sakuraba teaches a thermoelectric generation device 10 having excellent thermoelectric conversion efficiency which can be manufactured comparatively easily and whose structure can be made fine comprising a substrate 11 and a magnetic body (thin wire made of ferromagnetic material exhibiting anomalous Nernst effect) 12a disposed on the substrate and having ferromagnetism or antiferromagnetism, a conductive path (including fine wire connection bodies 13) comprising the magnetic body, the conductive path forming a meander pattern (English translation, abstract; ¶[0017]-¶[0020]; ¶[0024]-¶[0029]; Figs.2a-2b). The width of the magnetic body/thin wires 12a are reduced to several tens of nanometers to realize a large voltage in a small area (¶[0028]).
It would have been obvious before the effective filing date to configure the thermoelectric conversion element magnetic body of Nakatsuji & Tien with a width of 500 μm since Sakuraba teaches this configuration would have provided a fine structure that realizes a large voltage in a small area.
Response to Arguments
Applicant's arguments filed 17 March 2026 have been fully considered
Regarding terminology, the specification ¶[0060] teaches “internal stress” is also known as “residual” stress and denoted by σ. Applicant also notes the terms are synonymous (Response, p.7).
It is noted the art further elaborates that internal stress is distinct from intrinsic stress σi . Internal stress is the more inclusive term and includes the unavoidable thermal or extrinsic stress, σ(T), in addition to σi. The magnitude of the internal stress is expressed by the algebraic sum of both contributions or σ = σ(T) + σi. 11 12
In light of this, the distinction made by Applicant between “externally applied stress” and “internal stress” 13 is unclear since thermal or extrinsic stress σ(T) is “externally applied” during film preparation at elevated temperatures in his own invention, but nevertheless is a component of internal stress σ. For instance, the specification ¶[0066] & Table 1 teach an Example 1 of a PET film sputtered at 130 ºC. Thus, “internal stress” lacks clear basis because Applicant distinguishes it from a stress applied externally, e.g., when the body is in a high temperature or high humidity environment, whereas the literature teaches the term includes thermal (extrinsic) stress σ(T) that occurs during manufacture. Thermal or extrinsic stress occurs when the body is in a “high temperature environment” during manufacture, when the film is prepared at elevated temperatures and thereafter cooled.14, 15 Further, Ohring notes that “[w]hen films are exposed to elevated temperatures or undergo relatively large temperature excursions, internal stresses frequently relax by time-dependent deformation processes induced by thermally activated motion of atoms and defects. As a result, defect concentrations are altered, film surface topography can change, and stress as well as strain magnitudes may be reduced.” 16 Thus, the internal stress of a magnetic body at formation may lie outside the claimed range but relax after subsequent use to lie within the claimed range. Thus, the claims are indefinite in scope.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BURTON S MULLINS whose telephone number is (571)272-2029. The examiner can normally be reached 9-5. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tulsidas C Patel can be reached at 571-272-2098. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BURTON S MULLINS/ Primary Examiner, Art Unit 2834
1 All paragraph references are made to those in the published application US Pat.Pub.2024/0341191.
2 17 March 2026 Response, p.6, second paragraph.
3 M.Ohring, “Materials Science of Thin Films” (Second Edition), Academic Press, 2002, Chap.12.5.1. Eq.(12-28).
4 Idem., Chap.12.3.5.
5 M.Huff “Review Paper: Residual Stresses in Deposited Thin-Film Material Layers for Micro- and Nano-Systems Manufacturing”, Micromachines (Basel), 2022 Nov 26;13(12):2084, pp.2-3.
6 M.Ohring, “Materials Science of Thin Films” (Second Edition), Academic Press, 2002, Chap.12.6.1.
7 P.Prevey (“X-Ray Diffraction Residual Stress Techniques”; Metals Handbook, 10 Metals Park: American Society for Metals, 1986, 380-392).
8 Malhotra et al. ("Analysis of thin film stress measurement techniques" Thin Solid Films, Vol.301, Issues 1–2, 1997, pp.45-54).
9 P.Prevey (“X-Ray Diffraction Residual Stress Techniques”; Metals Handbook, 10 Metals Park: American Society for Metals, 1986, 380-392).
10 Malhotra et al. ("Analysis of thin film stress measurement techniques" Thin Solid Films, Vol.301, Issues 1–2, 1997, pp.45-54).
11 M.Ohring, “Materials Science of Thin Films” (Second Edition), Academic Press, 2002, Chap.12.5.1. Eq.(12-28).
12 Tien et al. (“Evaluation of Electrical, Mechanical Properties, and Surface Roughness of DC Sputtering Nickel-Iron Thin Films” IEEE Transactions on Magnetics, Vol.50. No.7, pp 1-4. July 2014), Eq.(1).
13 Response filed 17 March 2026, p.7.
14 M.Ohring, “Materials Science of Thin Films” (Second Edition), Academic Press, 2002, Chap.12.3.5.
15 M.Huff “Review Paper: Residual Stresses in Deposited Thin-Film Material Layers for Micro- and Nano-Systems Manufacturing”, Micromachines (Basel), 2022 Nov 26;13(12):2084, pp.2-3.
16 M.Ohring, “Materials Science of Thin Films” (Second Edition), Academic Press, 2002, Chap.12.6.1.
Prosecution Insights