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 .
Status of Claims
This action is in response to Applicant’s Request for Reconsideration dated 02/20/2026.
Claim(s) 1-11 are currently pending.
Claim(s) 1 has been amended.
Claim Rejections - 35 USC § 103
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 and 8-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0212282 A1, Nakatsuji et al.* (hereinafter “Nakatsuji”) in view of “Topological Quantum Materials from the Viewpoint of Chemistry”, Kumar et al. (hereinafter “Kumar”) and JPH1168172 A, Miyoshi et al.* (hereinafter “Miyoshi”).
*References cited in the IDS.
Regarding claim 1
Nakatsuji teaches a thermoelectric conversion element (thermoelectric conversion device 20) [Fig. 13 and para. 0063], comprising:
a substrate (22) [Fig. 13 and para. 0063]; and
a magnetic body (power generator 23) disposed on the substrate (22) and having ferromagnetism or antiferromagnetism (the power converter 23 comprises thermoelectric conversion elements 24 and 25 including a material exhibiting ferromagnetism or antiferromagnetism) [Figs. 12-13, paras. 0034, 0061, 0065 and 0076].
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Nakatsuji, Fig. 13
Nakatsuji teaches the magnetic body comprising Co2MnGa [see, e.g., para. 0076].
Nakatsuji does not teach the magnetic body comprising at least one substance selected from the group consisting of the following (i) to (v):
(i) a stoichiometric substance having a composition represented by Fe3X;
(ii) an off-stoichiometric substance having a composition ratio of Fe and X that deviates from that of the stoichiometric substance in (i);
(iii) a substance in which a part of the Fe site of the substance in (i) above or a part of the Fe site in the substance in (ii) above is substituted by a typical metal element other than X,
(iv) a substance having a composition represented by Fe3M11-xM2x (0 <x < 1), where M1 and M2 are typical elements different from each other; and
(v) a substance in which a part of the Fe site of the substance in (i) above is substituted by a transition element other than X, and a part of the X site in the substance in (i) above is substituted by a typical metal element other than X,
X is a typical element or a transition element in (i), (ii), and (v) above,
X is Al, Ga, Ge, Sn, Si, Ti, Zr, Hf, V, Nb, Ta, Cr, Mo, W, Sc, Mn, or Co in (iii) above.
Kumar shows that Co2MnGa, Fe2Al and Fe3Ga are functional equivalent magnetic materials [Page 2800, Col. 1, section 6.4; see also Fig. 24c], Fe2Al and Fe3Ga satisfying (1), where X is Al or Ga.
Nakatsuji and Kumar are analogous inventions in the field of topological magnetic compounds. Kumar shows that Co2MnGa, Fe2Al and Fe3Ga are equivalent magnetic materials known in the art. Therefore, because these materials were art-recognized equivalents at the time the invention was made, one of ordinary skill in the art would have found it obvious to substitute Co2MnGa for any one of Fe2Al and Fe3Ga [MPEP 2144.06].
The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) [MPEP 2144.07].
Modified Nakatsuji does not teach a ratio of a measured density of the magnetic body to a theoretical density of the magnetic body is 0.80 or more.
Miyoshi teaches a thermoelectric conversion modules wherein the relative density (defined as the ratio of the measured density to the theoretical density of the thermoelectric material) of the thermoelectric material should be within a range of 0.7 or more [paras. 0052-0053].
Miyoshi teaches that, for thermoelectric materials, if the relative density is lower than 70%, the mechanical strength of the thermoelectric semiconductor is weak, and the thermoelectric semiconductor portion or the junction interface portion may be damaged or cracked in response to the inharmonic vibrations generated by the heat absorbing and dissipating members that are installed on both ends of the thermoelectric element pair and are heavier than the thermoelectric element pair, which may increase the internal resistance of the thermoelectric conversion module or cause wire breakage, making this undesirable. [para. 0052].
Modified Nakatsuji and Miyoshi are analogous inventions in the field of thermoelectric conversion modules. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the magnetic body of modified Nakatsuji such that the ratio of a measured density of the magnetic body to a theoretical density of the magnetic body is 0.80 or more, as in Miyoshi, for the purpose of improving the mechanical strength and avoiding damage/cracks within the thermoelectric conversion element.
Regarding claim 8
The limitation “wherein the magnetic body is a sputtered film” is directed to the method of forming/depositing the magnetic body and, accordingly, is considered a product-by-process limitation.
Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) [MPEP 2113].
Regarding claim 9
The limitation “wherein the magnetic body 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 considered a functional limitation and is given weight to the extent that the prior art is capable of performing the claimed function.
Since the structure of the prior art is the same as the one claimed, the same is considered capable of generating an electromotive force as required by the claims.
It has been held that when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (see MPEP § 2112.01). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Examiner notes that Nakatsuji teaches that the anomalous Nernst effect is a phenomenon observed when heat current flowing through a magnetic material creates a temperature difference, which generates an electric voltage in a direction perpendicular to both a direction of magnetization and a temperature gradient [paras. 0002, 0036, 0068, and 0071].
Regarding claim 10
The limitation “wherein the magnetic body is capable of generating an electromotive force by anomalous Nernst effect” is considered a functional limitation and is given weight to the extent that the prior art is capable of performing the claimed function.
Since the structure of the prior art is the same as the one claimed, the same is considered capable of generating an electromotive force as required by the claims.
It has been held that when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (see MPEP § 2112.01). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Examiner notes that the thermoelectric conversion element disclosed in Nakatsuji generates electromotive force by the anomalous Nernst effect [Abstract and para. 0063; see also Kumar, page 2800].
Regarding claim 11
Modified Nakatsuji teaches the thermoelectric conversion element as set forth above, comprising a conductive path comprising the magnetic body (23) [Fig. 13 and para. 0067], the conductive path forming a meander pattern (“the power generator 23 is provided on the first surface 22a of the substrate 22 in a serpentine shape”) [Fig. 13 and para. 0066]
Claim(s) 2-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakatsuji in view of Kumar and Miyoshi as applied to claims 1 and 8-11 above, and further in view of US 2021/0036202 A1, Hara et al. (hereinafter “Hara”).
Regarding claims 2-3
Modified Nakatsuji teaches the thermoelectric conversion element as set forth above.
However, Modified Nakatsuji is silent to the substrate having flexibility (instant claim 2) and comprising at least an organic polymer (instant claim 3).
Hara teaches a thermoelectric conversion element comprising a substrate (12) and a thermoelectric body (16) [Figs. 4a-4b and para. 0200], wherein when the supporting substrate (12) is flexible and comprises an organic polymer (polyimide) the performance of the thermoelectric element layer can be maintained without causing thermal deformation of the substrate [para. 0118]. Further, the flexible substrate comprising an organic polymer has high heat resistance and dimensional stability [paras. 0118-0119].
Modified Nakatsuji and Hara are analogous inventions in the field of thermoelectric conversion modules. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the substrate of modified Nakatsuji such that is has flexibility and comprises at least an organic polymer, as disclosed in Hara, for the purpose of providing high heat resistance and flexibility, thereby maintaining the performance of the thermoelectric/magnetic layer without causing thermal deformation of the substrate.
The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) [MPEP 2144.07].
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakatsuji in view of Kumar and Miyoshi as applied to claims 1 and 8-11 above, and further in view of KR 20170114189 A, Lee et al. (hereinafter “Lee”).
Regarding claim 4
Modified Nakatsuji does not teach that the substrate has a glass transition temperature of 200°C or lower.
Lee teaches a thermoelectric conversion element wherein, from the viewpoint of flexibility and versatility (ability to apply the element to devices such as automobiles where heat is generated at 200°C or more) [page 3], the substrate comprises a polymer having a glass transition temperature of 50°C or higher [page 3].
Modified Nakatsuji and Lee are analogous inventions in the field of thermoelectric conversion modules. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the substrate of modified Nakatsuji to comprise a polymer having a glass transition temperature of 50°C or higher, as in Lee, as such would allow the thermoelectric element to be mounted on various types of devices.
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) [MPEP 2144.05].
Claim(s) 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakatsuji in view of Kumar and Miyoshi as applied to claims 1 and 8-11 above, and further in view of WO 2014/087749 A1, Kirihara et al. (hereinafter “Kirihara”).
Regarding claim 5
Modified Nakatsuji does not teach a squareness ratio of the magnetic body is 0.6 or more, the squareness ratio being a ratio of a residual magnetization to a saturation magnetization in an M-H curve of the magnetic body.
Kirihara discloses a thermoelectric conversion element comprising a magnetic material, wherein increasing the residual magnetization when the magnetic field is returned to zero allows the magnetic material to hold and maintain magnetization in the optimal direction thereby improving the operation and movement reliability of a thermoelectric conversion element [Pages 3-4 and 6].
Accordingly, one of ordinary skill would have found obvious that the saturation magnetization (corresponding to the applied magnetic field) and the residual magnetization are values that may be optimized in order to achieve optimum performance of the thermoelectric element.
Absent a showing of criticality or unexpected results with respect to the squareness ratio of the magnetic body (a result-effective variable), it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to aid parameter through routine experimentation in order to achieve the desired magnetization thereby improving the operation and reliability of the thermoelectric conversion element.
It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art [MPEP 2144.05].
Regarding claim 6
Modified Nakatsuji does not teach a residual magnetization of the magnetic body is 500 emu/cm3 or more.
Kirihara discloses a thermoelectric conversion element comprising a magnetic material, wherein increasing the residual magnetization when the magnetic field is returned to zero allows the magnetic material to hold and maintain magnetization in the optimal direction thereby improving the operation and movement reliability of a thermoelectric conversion element [Pages 3-4 and 6].
Absent a showing of criticality or unexpected results with respect to the residual magnetization of the magnetic body (a result-effective variable), it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to aid parameter through routine experimentation such that the magnetic material holds and maintains magnetization when the magnetic field is returned to zero thereby improving the operation and reliability of the thermoelectric conversion element. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art [MPEP 2144.05].
Regarding claim 7
Modified Nakatsuji does not teach a maximum value of a slope of an M-H curve of the magnetic body is 1.5 emu/(cm3 x Oe) or more.
Kirihara discloses a thermoelectric conversion element comprising a magnetic material, wherein the magnetization of the material may be increased in order to hold and maintain magnetization in the optimal direction thereby improving the operation and movement reliability of a thermoelectric conversion element [Pages 3-4 and 6].
Absent a showing of criticality or unexpected results with respect to the maximum value of a slope of an M-H curve of the magnetic body (a result-effective variable), it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to aid parameter through routine experimentation such that the magnetic material holds and maintains the desired magnetization when the magnetic field is returned to zero thereby improving the operation and reliability of the thermoelectric conversion element. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art [MPEP 2144.05].
Response to Arguments
Applicant’s arguments, see Remarks Filed on 02/20/2026, with respect to the rejection of claim(s) 1-11 under 35 U.S.C. §103 have been considered but are moot because the arguments do not apply to the combination of references being used in the current rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
JP 2014-072256 A, Sakuraba et al. (cited in the IDS) teaches a thermoelectric power generation device 10 including a substrate 11, a power generation body 12, and a connection body 13, the power generation body 12 and the connection body 13 forming a meandering/serpentine pattern [Fig. 2a and paras. 0022-0024].
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 MAYLA GONZALEZ RAMOS whose telephone number is (571)272-5054. The examiner can normally be reached Monday - Thursday, 9:00-5:00 - EST.
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/MAYLA GONZALEZ RAMOS/Primary Examiner, Art Unit 1721
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