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
1-16 are pending. Claims 1-6 are withdrawn. Claims 7-16 are examined below.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 7, 8 and 14 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Ikemura et al. (US 2023/0180611).
Regarding claim 7, Ikemura discloses an energy harvester for converting thermal energy into electric energy (thermoelectric generation module) (see abstract), the energy harvester comprising:
an electrically conductive and flexible substrate having a substrate surface (i.e., flexible printed circuit board, 32 with conductive pads 35),
a plurality of thermoelectric legs (24a and 24b) each having a substrate end and an opposite end, the thermoelectric legs being arranged on and bonded to the substrate surface by soldering or sintering (see para [0039]), and comprising N-type (24b) thermoelectric legs and P-type (24a) thermoelectric legs (shown in fig. 2, para [0037]-[0041]), and
an opposite electrode layer (wiring layer 36) having an opposite electrode layer surface and being arranged on the opposite ends of the plurality of thermoelectric legs and bonded to the plurality of thermoelectric legs by soldering or sintering (see para [0039], also [0037]-[0041]),
wherein the opposite electrode layer surface (36) has been separated into segments with each segment representing a serial electrical connection of an N-type thermoelectric leg and a P-type thermoelectric leg, and the bonding of the thermoelectric legs to the substrate and to the opposite electrode layer provides a serial electrical connection of alternating N-type thermoelectric legs and P-type thermoelectric legs (see abstract, para [0058]-[0061]).
The limitation the electrode segments are formed “by removal of material between the segments” is a product by process limitation and is given weight to the extent that the process defines structure. It is the examiner’s position that the metal opposite electrode segments are able to be formed by the method recited.
Regarding claim 8, Ikemura discloses an energy harvester according to claim 7, wherein the substrate (32/35) comprises a flexible circuit board (see abstract and [0037]-[0041]),
Regarding claim 14, Ikemura discloses an energy harvester according to claim 7, wherein the opposite electrode layer (36) comprises an electrically insulating layer (33) and a thermally conductive layer (61), which electrically insulating layer insulates the opposite electrode layer from the thermally conductive layer (shown in fig. 7, see para [0037]-[0041] and [0046]).
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.
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.
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 non-obviousness.
Claims 7, 9-13, and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Fletcher et al. (US 2022/0037574) in view of Chen et al. (US 2022/0013704).
Regarding claim 7, Fletcher discloses an energy harvester for converting thermal energy into electric energy (i.e., thermoelectric device, see abstract), the energy harvester comprising:
an electrically conductive (conductive pads 107) and flexible substrate (101) having a substrate surface (shown in fig. 1) (see para [0039]),
a plurality of thermoelectric legs (105n and 105p) each having a substrate end and an opposite end (shown in fig. 1), the thermoelectric legs being arranged on the substrate surface, and comprising N-type thermoelectric legs and P-type thermoelectric legs (see para [0031]-[0032], and
an opposite electrode layer (103) having an opposite electrode layer surface (shown in fig. 1) and being arranged on the opposite ends of the plurality of thermoelectric legs (shown in fig. 1);
wherein the opposite electrode layer (103) and the electrode layer surface has been separated into segments (see marked-up of figure 1 below) (shown in fig. 1, see para [0033]) with each segment representing a serial electrical connection of an N-type thermoelectric leg and a P-type thermoelectric leg (see para [0032]-[0038]); and
the bonding to the substrate and to the opposite electrode layer and segments provides a serial electrical connection of alternating N-type thermoelectric legs and P-type thermoelectric legs (see para [0032]-[0038]).
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Fletcher does not disclose wherein the thermoelectric legs are bonded to the substrate surface by soldering or sintering; and bonded to the opposite electrode also by soldering or sintering.
Chen is analogous art to Fletcher as Chen discloses a thermoelectric device on a flexible substrate (see abstract and para [0006]). Chen discloses wherein the thermoelectric pillars are bonded to the upper and lower contacts by soldering (see fig. 1, para [0075]).
The court has held it would be obvious to a person having ordinary skill in the art to combine prior art elements (i.e., the thermoelectric pillars and electrode connections of Fletcher) with known methods (i.e., the solder connection method of Chen), wherein the result is predictable (i.e., electrically connected thermoelectric device).
Fletcher as modified by Chen does not disclose “by removal of material between segments”. The limitation is a product by process limitation and is given weight to the extent that the process defines structure. It is the examiner’s position that the metal opposite electrode segments (see para [0038]) are able to be formed by the method recited.
Regarding claim 9, modified Fletcher discloses an energy harvester according to claim 7, wherein the opposite electrode layer (103) comprises an electrically conductive foil (see para [0036]-[0038]). Specifically, Fletcher discloses the contact (103) may be a metal (i.e., electrically conductive) with a thickness of 1 to 10 microns (i.e., a foil) (see para [0038]).
Regarding claim 10, modified Fletcher discloses an energy harvester according to claim 7, wherein the serial electrical connection of alternating N-type thermoelectric legs and P-type thermoelectric legs comprises individual N-type thermoelectric legs serially connected to groups of P-type thermoelectric legs, individual P-type thermoelectric legs serially connected to groups of N-type thermoelectric legs or groups of N-type thermoelectric legs serially connected to groups of P-type thermoelectric legs (see para [0002], [0033]-[0037]).
Regarding claim 11, modified Fletcher discloses an energy harvester according to claim 7, wherein the energy harvester does not comprise a further layer arranged onto the opposite electrode layer opposite the plurality of thermoelectric legs (shown in fig. 1, see para [0032]- [0038]).
Regarding claim 12, modified Fletcher discloses an energy harvester according to claim 7.
The limitation “wherein the energy harvester is obtainable in a method comprising the steps of:
providing an electrically conductive and flexible substrate having a substrate surface, providing a plurality of thermoelectric legs each having a substrate end and an opposite end, the plurality of thermoelectric legs comprising N-type thermoelectric legs and P-type thermoelectric legs, arranging the substrate ends of the plurality of thermoelectric legs on the substrate surface, bonding the substrate ends of the plurality of thermoelectric legs to the substrate to form a plurality of pairs of neighboring thermoelectric legs, with each pair of neighboring thermoelectric legs having an N-type thermoelectric leg being electrically connected to a P-type thermoelectric leg via the substrate ends of the N-type thermoelectric leg and the P-type thermoelectric leg, providing an opposite electrode layer surface with an opposite electrode layer surface, arranging the opposite electrode layer on the opposite ends of the plurality of thermoelectric legs, bonding the opposite ends of the plurality of thermoelectric legs to the opposite electrode layer surface, and removing material in the opposite electrode layer to separate the opposite electrode into segments that electrically connect pairs of neighboring N-type thermoelectric legs and P-type thermoelectric legs, thereby forming serial electrical connections between pairs of neighboring thermoelectric legs” is a product by process limitation and is given weight to the extent that the prior art device is able to be formed by the recited method. See MPEP § 2113.
It is the examiner’s position that the thermoelectric harvester disclosed by Fletcher as modified by Chen is able to be formed by the process recited.
Regarding claim 13, modified Fletcher discloses an energy harvester according to claim 9, wherein the electrically conductive foil has a thickness in the range of 1 to 10 microns (µm) (see para [0038]), which anticipates the recited range of 1 µm to 500 µm.
Regarding claims 15 and 16, modified Fletcher discloses an energy harvester according to claim 7, but does not disclose wherein the material between the segments has been removed by cutting (claim 15), and does not disclose wherein the material between the segments has been removed by laser cutting (claim 16).
The limitation that the material between the segments has been removed by cutting and/or laser cutting is a product by process limitation and is given weight to the extent that the process defines structure. It is the examiner’s position that the structure of modified Fletcher is able to be formed by the recited process (see discussion of claim 7).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Fletcher et al. and Chen et al. as applied to claim 7 above, and further in view of Okumura et al. (US 2019/0051807).
Regarding claim 8, modified Fletcher discloses an energy harvester according to claim 7, but does not disclose wherein the substrate comprises a flexible circuit board.
Okumura is analogous art to modified Fletcher as Okumura discloses a thermoelectric device (see para [0001] and [0160]-[0161]). Okumura discloses the use of a flexible circuit board as the flexible substrate (see para [0171]).
The court has held it would be obvious to a person having ordinary skill in the art to substitute one known device (i.e., a flexible circuit board substrate as disclosed by Okumura) for another known device (i.e., a flexible substrate as disclosed by Fletcher) wherein the result is predictable (i.e., a thermoelectric device with N-type and P-type thermoelements electrically connected on a flexible substrate).
Response to Arguments
Applicant's arguments filed 4/22/2026 have been fully considered but they are not persuasive.
The claims are directed to a device, which is defined by recited structure. Process steps, unless they define a specific structure, are not given weight (see MPEP § 2113). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing a nonobvious difference between the claimed product and the prior art product. See In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-33 (Fed. Cir. 1983). See MPEP § 2113 II.
Applicant’s arguments are arguing process steps (see page 10). Applicant errors in stating Fletcher discloses printing as a method of forming the metal, e.g., copper, by printing. The printing process cited in Fletcher is directed to the thermoelectric legs. Fletcher does not disclose the production method, but does disclose the material forming the electrode is a metal or conductive metal compounds (see para [0038]). It is known that metal or metal alloy pads may be formed by cutting a metal or metal alloy sheet.
Applicant’s arguments regarding Chen and Okumura is moot as Fletcher does not require modification to meet the limitation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAYNE L MERSHON whose telephone number is (571)270-7869. The examiner can normally be reached 10:00 to 6:00 M-F.
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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.
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JAYNE L. MERSHON
Primary Examiner
Art Unit 1721
/JAYNE L MERSHON/ Primary Examiner, Art Unit 1721
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