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 .
Claim Objections
Claim 2 is objected to because of the following informalities: line 3 of claim 2 appears to contain a typographical error with regard to the omission of the word “by” between “heated” and “the first hot plate.” Appropriate correction is required.
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 4 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 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. Specifically, the term “low” in claim 4 is a relative term which renders the claim indefinite. The term “low pressure” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 5 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 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. Specifically, the term “low” in claim 5 is a relative term which renders the claim indefinite. The term “low pressure” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 13 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 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. Specifically, claim 13 recites the limitation "the plates" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 16 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 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. Specifically, claim 16 recites the limitation "the plates" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 18 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 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. Specifically, claim 18 recites the limitation "the plates" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 18 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Specifically, claim 1 recites “wherein the first hot plate further comprises a plurality of closed chambers entirely within the planar structure of the first hot plate, and wherein the closed chambers contain either i) a vacuum, or ii) a fluid or vapour at a pressure below atmospheric pressure when measured at room temperature,” and claim 18, which depends on claim 1, recites “wherein the plates are formed from copper or aluminum,” however, the as-filed specification does not enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make an aluminum or copper plate comprising a plurality of closed chambers containing either i) a vacuum, or ii) a fluid or vapour at a pressure below atmospheric pressure when measured at room temperature.
Wands Analysis: [Note MPEP 2164.01(a)]
(A) Breadth of claims:
The limitations of the claims are broad in that they merely state wherein the first hot plate further comprises a plurality of closed chambers entirely within the planar structure of the first hot plate, and wherein the closed chambers contain either i) a vacuum, or ii) a fluid or vapour at a pressure below atmospheric pressure when measured at room temperature, and claim 18 states wherein the plates are formed from copper or aluminum.
(B) The nature of the invention:
The invention is a static thermal generator.
(C) The state of the prior art:
Given the state of the prior art, the process for forming an aluminum or copper plate comprising a plurality of closed chambers containing either i) a vacuum, or ii) a fluid or vapour at a pressure below atmospheric pressure when measured at room temperature requires a more detailed disclosure in order to enable one skilled in the art to produce the claimed static thermal generator.
(D) The level of one of ordinary skill:
One of ordinary skill in this art is considered to be a scientist, skilled in the methods of thermoelectric design and processes, with knowledge of standard thermoelectric devices, and familiar with parameters that affect the formation and performance of such devices.
(E) The level of predictability in the art:
The level of predictability in the art is considered to be low, inasmuch as there are numerous variables known to affect thermoelectric device manufacturing and performance.
(F) The amount of direction provided by the inventor:
The inventor does not provide adequate direction as to how to formulate a plate which meets the claim limitations. The specification describes the claimed generator with language that is essentially the same as that recited in the claims or entirely conventional in the art. There is not adequate guidance as to the manner in which the claimed chambers are formed in an aluminum or copper plate.
(G) The existence of working examples:
There are no examples in the as-filed specification that provide details as to how to form an aluminum or copper plate containing the claimed chambers containing either i) a vacuum, or ii) a fluid or vapour at a pressure below atmospheric pressure when measured at room temperature.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure: The Applicant has not enabled one of ordinary skill in the art at the time of the invention to produce the invention. Therefore, an undue level of experimentation would be required for one of ordinary skill in the art at the time of the invention to produce an aluminum or copper plate with the claimed chambers containing either i) a vacuum, or ii) a fluid or vapour at a pressure below atmospheric pressure when measured at room temperature.
In light of the above considerations, the Applicant has not enabled one of ordinary skill in the art to make and/or use the claimed invention.
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.
Claims 1-5, 8-17, and 19-22 are rejected under 35 U.S.C. 103 as being unpatentable over Seon et al. (US 2014/0182649) in view of Jones et al. (“Micro Heat Pipes in Low Temperature Cofire Ceramic (LTCC) Substrates”).
Regarding claims 1 and 4, Seon discloses a static thermal generator for the generation of electricity from heat (abstract; 10 in Fig. 2), wherein the thermal generator comprises: a first hot plate comprising a planar structure (110, 111, 111’, 112, 112’ in Fig. 5), adjacent to a heating channel (114 in Fig. 5), the heating channel configured to carry a hot fluid such that the first hot plate is configured to be heated by the hot fluid ([0037]); a first cool plate comprising a planar structure ([0041], 120, 121, 121’ 122, 122’ in Fig. 5), adjacent to a cooling channel ([0040]), the cooling channel configured to carry a cool fluid such that the first cool plate is configured to be cooled by the cool fluid ([0040]), wherein the first hot plate comprises proximal (112, 112’ in Fig. 5), central (110 in Fig. 5) and distal portions (111 and 111’ in Fig. 5), and the first cool plate comprises proximal (122, 122’ in Fig. 5), central ([0041], 120, Fig. 5) and distal portions (121 and 121’ in Fig. 5); wherein the first hot plate and first cool plate are arranged such that the central portion of the first hot plate and the central portion of the first cool plate overlap one another ([0041], 110 and 120 in Fig. 5); wherein the first hot plate and the first cool plate are positioned perpendicular to one another ([0041], 110, 111, 111’, 112, 112’ in relation to 120, 121, 121’ 122, 122’ in Fig. 5); wherein the central portion of the first hot plate and the central portion of the first cool plate are separated by a space configured to house a thermoelectric module ([0041], space occupied by 130 between 110 and 120 in Fig. 5).
Seon does not explicitly disclose the first hot plate further comprises a plurality of closed chambers entirely within the planar structure of the first hot plate, and wherein the closed chambers contain either a vacuum or a fluid or vapor at a pressure below atmospheric pressure when measured at room temperature.
Jones discloses that by integrating micro heat pipes directly within a ceramic substrate, effective thermal conductivity for spreading heat in both radial and axial directions is achieved (abstract).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the first hot plate of Seon with internal heat pipes, as disclosed by Jones, because as taught by Jones, effective thermal conductivity for spreading heat in both radial and axial directions is achieved (abstract).
Modified Seon discloses the first hot plate further comprises a plurality of closed chambers (Jones – first full paragraph of right column on page 110) entirely within the planar structure of the first hot plate (Seon - 110, 111, 111’, 112, 112’ in Fig. 5; Jones – first paragraph of right column on page 110), and wherein the closed chambers contain a fluid or vapor (Jones – line 6 of third paragraph of left column of page 111) at a pressure below atmospheric pressure when measured at room temperature (Jones – lines 6-10 of third paragraph of left column of page 111).
With regard to the limitation “wherein at an end of the heating channel the hot fluid exits the heating channel and a pump conveys the hot fluid to a position at which the hot fluid is re-heated,” the limitation is directed to the manner in which the apparatus is intended to be used, and a recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
It is noted that the claimed thermal generator does not include “a heating channel,” “cooling channel,” “a thermoelectric module,” “an end of the heating channel,” “a cool fluid,” or “a hot fluid.”
It is further noted that with regard to the preamble “A static thermal generator for the generation of electricity from heat,” statements in the preamble reciting the purpose or intended use of the claimed invention which do not result in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art do not limit the claim and do not distinguish over the prior art apparatus (or process). See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963); In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) and cases cited therein, as it has been held that the recitation of a new intended use for an old product does not make a claim to that old product patentable. In re Schreiber, 44 USPQ2d 1429 (Fed. Cir. 1997). See also MPEP § 2111.02, §2112.02 and 2114-2115.
Regarding claim 2, modified Seon discloses all the claim limitations as set forth above.
While modified Seon does disclose one side of the thermoelectric module is cooled by the first cool plate, and the other side of the thermoelectric module is heated by the first hot plate (Seon - [0041], 130 in relation to 110, 111, 111’, 112, 112’, and in relation to 120, 121, 121’ 122, 122’ in Fig. 5), the limitation is directed to the manner in which the apparatus is intended to be used, and a recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
It is further noted that while claim 1 does recite “a space configured to house a thermoelectric module,” the claimed thermal generator does not include a thermoelectric module based on the limitations recited in claim 1.
Regarding claim 3, modified Seon discloses all the claim limitations as set forth above.
While modified Seon discloses wherein the space is configured such that when in situ said thermoelectric module contacts both the first hot plate and a second cool plate (Seon – Figures 5, 6, and 7 depict alternating hot and cool plates; it is noted the limitation “contacts” does not require direct physical contact or the absence of intermediate components), the limitation is directed to the manner in which the apparatus is intended to be used, and a recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
It is further noted that while claim 1 does recite “a space configured to house a thermoelectric module,” the claimed thermal generator does not include a thermoelectric module based on the limitations recited in claim 1, nor does the claimed thermal generator include a second cool plate.
Regarding claim 5, modified Seon discloses all the claim limitations as set forth above. Modified Seon further discloses the first cool plate further comprises chambers (Seon – 123 and 124 in Fig. 5).
Regarding claim 8, modified Seon discloses all the claim limitations as set forth above. Modified Seon further discloses a second hot plate comprising a proximal portion, central portion and distal portion, positioned in line with the first hot plate, and vertically offset from the first hot plate, wherein the first cool plate is positioned between the first hot plate and the second hot plate (Seon – Figures 5, 6, and 7). It is noted that the limitation “vertically” is dependent on the spatial orientation of the device.
Regarding claim 9, modified Seon discloses all the claim limitations as set forth above. Modified Seon further discloses wherein the second hot plate and first cool plate are arranged such that the central portion of the second hot plate and the central portion of the first cool plate overlap one another; wherein the second hot plate and the first cool plate are positioned perpendicular to one another; wherein the central portion of the second hot plate and the central portion of the first cool plate are separated by a space configured to house a second thermoelectric module (Seon - Figures 5, 6, and 7).
Regarding claim 10, modified Seon discloses all the claim limitations as set forth above. Modified Seon further discloses a second cool plate comprising a proximal portion, central portion and distal portion, positioned in line with the first cool plate, and vertically offset from the first cool plate, wherein the first hot plate is positioned between the first cool plate and the second cool plate (Seon - Figures 5, 6, and 7). It is noted that the limitation “vertically” is dependent on the spatial orientation of the device.
Regarding claim 11, modified Seon discloses all the claim limitations as set forth above. Modified Seon further discloses the second cool plate and first hot plate are arranged such that the central portion of the second cool plate and the central portion of the first hot plate overlap one another; wherein the second cool plate and the first hot plate are positioned perpendicular to one another; wherein the central portion of the second cool plate and the central portion of the first hot plate are separated by a space configured to house a third thermoelectric module (Seon – Figures 5, 6, and 7).
Regarding claim 12, modified Seon discloses all the claim limitations as set forth above. Modified Seon further discloses a first thermoelectric module (Seon – 130 in Fig. 5).
Regarding claim 13, modified Seon discloses all the claim limitations as set forth above. Modified Seon further discloses the central portion of the plates is profiled such that when overlapping with another one or more channels are created at the edge of the central portion (Seon – channels between gaskets in Figures 5, 6, and 7).
Regarding claim 14, modified Seon discloses all the claim limitations as set forth above.
While modified Seon does disclose the heating channel passes from the first hot plate to the second hot plate (Seon – 114 in Figures 5, 6, and 7); the limitation is directed to the manner in which the apparatus is intended to be used, and a recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
As noted above, the claimed thermal generator does not include the heating channel.
Regarding claim 15, modified Seon discloses all the claim limitations as set forth above.
While modified Seon does disclose the cooling channel passes from the first cool plate to the second cool plate (Seon – [0040], Figures 5, 6, and 7); the limitation is directed to the manner in which the apparatus is intended to be used, and a recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
As noted above, the claimed thermal generator does not include the cooling channel.
Regarding claim 16, modified Seon discloses all the claim limitations as set forth above. Modified Seon further discloses rods to connect the plates together such that they are secure (Seon – [0038] discloses fixing bolts).
Regarding claim 17, modified Seon discloses all the claim limitations as set forth above.
With regard to the limitation “wherein the static thermal generator is within a sealed shell,” the limitation is directed to the manner in which the apparatus is intended to be used, and a recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
It is noted that the sealed shell is not part of the claimed static thermal generator.
Regarding claim 19, modified Seon discloses all the claim limitations as set forth above.
With regard to the limitation “wherein the hot fluid is oil, and optionally wherein the cool fluid is water,” the limitation is directed to the manner in which the apparatus is intended to be used, and a recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
As set forth above, the claimed thermal generator does not include “a cool fluid,” or “a hot fluid.”
Regarding claim 20, modified Seon discloses all the claim limitations as set forth above.
With regard to the limitation “wherein the hot fluid transfers waste heat from an industrial process, or wherein the hot fluid is heated via energy from the sun,” the limitation is directed to the manner in which the apparatus is intended to be used, and a recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
As set forth above, the claimed thermal generator does not include the hot fluid.
Regarding claim 21, modified Seon discloses all the claim limitations as set forth above. Modified Seon further discloses a vat of hot fluid (Seon – [0004], [0028]; the fuel tank of the disclosed vehicle satisfies the limitation requiring “a vat of hot fluid”).
With regard to the limitation “positioned adjacent the inside of the sealed shell, such that the hot fluid is warmed by energy from the sun,” the limitation is directed to the manner in which the apparatus is intended to be used, and a recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
As set forth above, the claimed thermal generator does not include the sealed shell.
Regarding claim 22, modified Seon discloses all the claim limitations as set forth above. Modified Seon further discloses the thermoelectric module is configured to transfer heat energy to electrical energy in the presence of a temperature differential (Seon – [0006]).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Seon et al. (US 2014/0182649) in view of Jones et al. (“Micro Heat Pipes in Low Temperature Cofire Ceramic (LTCC) Substrates”) as applied to claim 1 above, and further in view of Bell (US 2003/0005706).
Regarding claim 18, modified Seon discloses all the claim limitations as set forth
above.
Modified Seon does not explicitly disclose the plates are formed from copper or aluminum.
Bell discloses a thermal generator ([0094], [0095]) and further discloses plates formed from copper ([0076] L9).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the plates of modified Seon with copper, as disclosed by Bell, because as evidenced by Bell, the use of copper to form the plates of a thermal generator amounts to the use of a known material in the art for its intended purpose to achieve an expected result, and one skilled in the art would have a reasonable expectation of success when forming the plates of modified Seon with copper based on the teaching of Bell.
Response to Arguments
Applicant’s arguments with respect to claims 1-5 and 8-22 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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/TAMIR AYAD/Primary Examiner, Art Unit 1726
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