CTFR 18/681,670 CTFR 89288 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. 12-151 AIA 26-51 12-51 Status of Claims This action is in response to Applicant' s Request for Reconsideration dated 02/20/2026. Claim(s) 1-10 are currently pending. Claim(s) 1 has been amended. Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-23-aia AIA 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. 07-20-02-aia AIA 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. 07-21-aia AIA Claim (s) 1-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/009308 A1, Nakatsuji et al., with US 2020/0212282 A1 used as an English language equivalent, in view of WO 2018/181661, Seki et al. and “Topological Quantum Materials from the Viewpoint of Chemistry”, Kumar et al . 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 thermoelectric converter (corresponding to power generator 23) disposed on the substrate (22) [Figs. 12-13, paras. 0034, 0061, 0065 and 0076]. However, Nakatsuji is silent to the thickness of the thermoelectric conversion element (including the substrate), its thermal conductivity and its flexural rigidity and, accordingly, does not teach that the thermoelectric conversion element satisfies a requirement (I) below, a requirement (II) below, or both the requirements (I) and (II) below: (I) a value obtained by dividing a thickness of the thermoelectric conversion element in a thickness direction of the substrate by a thermal conductivity of the thermoelectric conversion element in the thickness direction of the substrate is 9 x 10-4 m2KW-1 or less; and (II) a value obtained by dividing a flexural rigidity of the thermoelectric conversion element by a width of the thermoelectric conversion element is 3 x 10-6 Pa-m4/mm or less. Seki, similar to Nakatsuji, teaches a thermoelectric conversion element (corresponding to a thermoelectric conversion device as depicted in Figs. 5A-5C) [see paras. 0020-0023], comprising: a substrate (2) [Figs. 5A-5C and paras. 0020-0023]; and a thermoelectric converter (corresponding to thermoelectric conversion element layer 6) [Figs. 5A-5C and paras. 0020-0023], wherein when the thermal conductivity of a thermoelectric conversion element is in a range of 0.1 to 5 W/m·K it is easy to maintain the temperature difference inside the thermoelectric element layer, and it is easy to maintain the high thermoelectric conversion performance of the thermoelectric conversion device [para. 0074]. It is noted that Seki discloses the substrate made of a material which does not increase the thermal conductivity of the thermoelectric converter (6) [paras. 0069-0071]. With regards to the thickness of the thermoelectric conversion element, Seki teaches the following: from the viewpoint of flexibility, heat resistance and dimensional stability, the thickness of the substrate is in the range of from 1 to 1000 μm [para. 0070]; from the viewpoint of connection stability and thermoelectric performance, the thickness of the electrode pattern (3) is in the range of 0.01 µm to 200µm (0.01 nm = 0.001 µm) [para. 0072]; and from the viewpoint of flexibility and material cost, the thickness of the thermoelectric element layer (6) is in the range of 0.1 to 100 µm [para. 0104]. Accordingly, Seki satisfies the requirement (I), where the value obtained by dividing a thickness of the thermoelectric conversion element in a thickness direction of the substrate by a thermal conductivity of the thermoelectric conversion element in the thickness direction of the substrate is 9 x 10-4 m2KW-1 or less (see calculations above wherein Seki discloses a value that falls within the claimed range e.g., is 1.3 x 10 -2 m 2 KW -1 ). Nakatsuji and Seki are analogous inventions in the field of thermoelectric conversion elements. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the thermoelectric conversion element of Nakatsuji such that a requirement (I) is satisfied, as in Seki, for the purpose of improving the mechanical properties and the thermoelectric performance of the device. Modified Nakatsuji teaches the magnetic body comprising Co 2 MnGa [see Nakatsuji, para. 0076]. Modified Nakatsuji does not teach the thermoelectric converter 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 Fe 3 X; (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 Fe 3 M1 1-x M2 x (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 (i), where X is Al or Ga. Modified 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]. Regarding claim 2 Modified Nakatsuji teaches the thermoelectric conversion element as set forth above, having a thickness of 200 µm or less (1.11 µm to 1300 µm) [Seki, paras. 0070, 0072 and 0104]. 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]. Regarding claim 3 Modified Nakatsuji teaches the thermoelectric conversion element as set forth above, having a thickness of 150 µm or less (1.11 µm to 1300 µm) [Seki, paras. 0070, 0072 and 0104]. 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]. Regarding claim 4 Modified Nakatsuji teaches the thermoelectric conversion element as set forth above, wherein the substrate (22) has a surface layer free of MgO (in the absence of any indication that the substrate necessarily has MgO as a surface layer, it is interpreted that it does not) [Nakatsuji, Fig. 13 and para. 0063]. Regarding claims 5-7 Nakatsuji teaches the thermoelectric conversion element as set forth above. Nakatsuji fails to disclose the substrate (22) depicted in Fig. 13 having flexibility (instant claim 5) and comprising at least an organic polymer (instant claim 6). Seki teaches that when the supporting substrate is flexible and comprises an organic polymer (e.g., PET, polyimide, etc.) the performance of the thermoelectric element layer can be maintained without causing thermal deformation of the substrate [paras. 0061, 0069-0070 and 0118]. Further, the flexible substrate comprising an organic polymer has high heat resistance and dimensional stability [paras. 0118-0119]. Modified Nakatsuji and Seki 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 Seki, 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]. With regards to the limitation “wherein the substrate has a visible transmittance of 80% or more” (instant claim 7), because the materials disclosed in Seki (e.g., PET; see paras. 0061 and 0069-0070 of Seki) are the same as those described in the instant specification to have a light transmittance of 80% or more (see paras. 0048 and 0068 of the instant published application wherein the substrate materials disclosed to have the required visible light transmittance include, for example, PET, polyimide, etc.), the claimed properties or functions are presumed inherent. The court has held that products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) Regarding claim 8 Modified Nakatsuji teaches the thermoelectric conversion element as set forth above. The limitation “wherein the thermoelectric converter generates an electromotive force in a direction orthogonal to the 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 9 The limitation “wherein the thermoelectric converter is capable of generating an electromotive force by magnetothermoelectric 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]. Regarding claim 10 Modified Nakatsuji teaches the thermoelectric conversion element as set forth above, comprising a conductive path comprising the thermoelectric converter (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] . Response to Arguments Applicant’s arguments, see Remarks Filed on 02/20/2026, with respect to the rejection of claim(s) 1-8 and 10 under 35 U.S.C. §103 over Seki have fully been considered and are persuasive. Accordingly, the rejection of claim(s) 1-8 and 10 under 35 U.S.C. §103 over Seki has been withdrawn. Applicant’s arguments, see Remarks Filed on 02/20/2026, with respect to the rejection of claim(s) 1-10 under 35 U.S.C. §103 over Nakatsuji in view of Seki have been considered but are moot because the arguments do not apply to the combination of references being used in the current rejection. Conclusion 07-96 AIA 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. 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, Allison Bourke can be reached at (303)297-4684. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /MAYLA GONZALEZ RAMOS/Primary Examiner, Art Unit 1721 Application/Control Number: 18/681,670 Page 2 Art Unit: 1721 Application/Control Number: 18/681,670 Page 3 Art Unit: 1721 Application/Control Number: 18/681,670 Page 4 Art Unit: 1721 Application/Control Number: 18/681,670 Page 5 Art Unit: 1721 Application/Control Number: 18/681,670 Page 6 Art Unit: 1721 Application/Control Number: 18/681,670 Page 7 Art Unit: 1721 Application/Control Number: 18/681,670 Page 8 Art Unit: 1721 Application/Control Number: 18/681,670 Page 9 Art Unit: 1721
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