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
Claims 5 and 6 recite the abbreviation “SEM/EDS”. The first instance of abbreviation should include the complete word or phrase that it represents. Further correction is required.
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.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tamaki (US 2017/0117453 A1) in view of Xin (CN 105695774 A, Machine Translation).
Regarding claim 1, Tamaki discloses a thermoelectric conversion material which is a polycrystalline material composed of a plurality of crystal grains ([0065]), the thermoelectric conversion material comprising ([0008][0033]-[0040]): Mg, at least one element selected from the group consisting of Sb and Bi.
In addition, Tamaki discloses that the thermoelectric conversion material comprises Mgx(Bi,Sb)2-y(Se,Te)y wherein x is in the range of 3.2-3.4 (see Table 5) y is in the range of 0.0001-0.06.
Applicant’s specification (see USPub for mapping US 20240365669 A1) discloses a substantially similar composition Mgx(Bi,Sb)2-y(Se,Te)y wherein x is in the range of 3.05-3.5 (see Table 5) y is in the range of 0.0001-0.06.
It would have been obvious to one of ordinary skill in the art at the time of invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. In re Malagari, 182 USPQ 549.
The instant specification performs spark plasma sintering at temperatures ranging between 550°C-800°C of mixed powders of Mg, Sb, and Bi and holding these temperatures between 5-30 mins ([0037]-[0038], [0044]-[0058]).
Tamaki does disclose that a Mg-Sb-Bi-Te powders ([0059]) ([0050]) are sintered in spark plasma sintering (SPS) method ([0062]) which is similar to the method as instantly disclosed which mixes powders of Sb, Bi, Te, Mg and then subject them to spark plasma sintering.
Tamaki discloses it is performed at 600°C for 30 mins and lowered to room temperature before it is removed ([0060]).
Xin discloses that a Mg--3Sb2 based thermoelectric material where spark plasma sintering 650°C-750°C and holding these temperatures between 5-15 mins and discloses that the boundaries of the crystalline grain structures remain unoxidized when these conditions are implemented ([0013][0009]).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the sintering temperature of Tamaki and modify the temperature to be 650°C-750°C holding it between 5-15 mins as disclosed by Xin because the boundaries of the crystalline grain structures remain unoxidized when these conditions are implemented.
Modified Tamaki discloses the same formula as instantly claimed formed by substantially the same method and therefore will also have the claimed “wherein the thermoelectric conversion material comprises an Mg-rich region formed in boundaries of the crystal grains, the Mg-rich region is a region in which a relative concentration of Mg with respect to the at least one element selected from the group consisting of Sb and Bi is higher than the relative concentration of Mg in the crystal grains”.
Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
Regarding claims 2-4, modified Tamaki discloses all of the claim limitation as set forth above.
As noted above Tamaki discloses that the thermoelectric conversion material comprises Mgx(Bi,Sb)2-y(Se,Te)y wherein x is in the range of 3.2-3.4 (see Table 5) y is in the range of 0.0001-0.06.
Applicant’s specification (see USPub for mapping US 20240365669 A1) discloses a substantially similar composition Mgx(Bi,Sb)2-y(Se,Te)y wherein x is in the range of 3.05-3.5 (see Table 5) y is in the range of 0.0001-0.06.
Applicant’s specification indicates that the Examples provided in Table 5 have a precipitation ratio of more than equal to 1% and less than or equal to 8% (Table 1 and Table4, Example 2 , Mg3.4Sb0.5Bi1.49Te0.01) which has a composition which substantially overlaps that of Tamaki (see Table 5).
With regards to the claim properties of:
“wherein the thermoelectric conversion material has an Mg precipitation ratio of more than or equal to 1%” (claim 2)
“wherein the Mg precipitation ratio is less than or equal to 20%” (claim 3)
“wherein the Mg precipitation ratio is less than or equal to 8%” (claim 4)
Modified Tamaki discloses the same formula as instantly claimed formed by substantially the same method and therefore will also have the claimed ranges for the Mg precipitation ratio.
Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
Regarding claim 5, modified Tamaki discloses all of the claim limitation as set forth above.
As noted above Tamaki discloses that the thermoelectric conversion material comprises Mgx(Bi,Sb)2-y(Se,Te)y wherein x is in the range of 3.2-3.4 (see Table 5) y is in the range of 0.0001-0.06.
Applicant’s specification (see USPub for mapping US 20240365669 A1) discloses a substantially similar composition Mgx(Bi,Sb)2-y(Se,Te)y wherein x is in the range of 3.05-3.5 (see Table 5) y is in the range of 0.0001-0.06.
Modified Tamaki discloses the same formula as instantly claimed formed by substantially the same method and therefore will also have the claimed property of “wherein the Mg-rich region is a region which is composed of Mg”.
With regards to the method of confirming the region is present namely being confirmed by SEM/EDS, the region is present whether or not confirmation by SEM/EDS is performed since ,modified Tamaki discloses the same formula as instantly claimed formed by substantially the same method and therefore will also have the claimed property of “wherein the Mg-rich region is a region which is composed of Mg”.
Regarding claim 6, modified Tamaki discloses all of the claim limitation as set forth above.
As noted above Tamaki discloses that the thermoelectric conversion material comprises Mgx(Bi,Sb)2-y(Se,Te)y wherein x is in the range of 3.2-3.4 (see Table 5) y is in the range of 0.0001-0.06.
Applicant’s specification (see USPub for mapping US 20240365669 A1) discloses a substantially similar composition Mgx(Bi,Sb)2-y(Se,Te)y wherein x is in the range of 3.05-3.5 (see Table 5) y is in the range of 0.0001-0.06.
Modified Tamaki discloses the same formula as instantly claimed formed by substantially the same method and therefore will also have the claimed property of “ wherein the thermoelectric conversion material has an Mg precipitation ratio of more than or equal to 1%”.
With regards to the method of confirming the region is present namely being confirmed by SEM/EDS, the region is present whether or not confirmation by SEM/EDS is performed since ,modified Tamaki discloses the same formula as instantly claimed formed by substantially the same method and therefore will also have the claimed property of “wherein the thermoelectric conversion material has an Mg precipitation ratio of more than or equal to 1%”.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tamaki (US 2017/0117453 A1) in view of Xin (CN 105695774 A, Machine Translation) as applied to claims 1-6 above and in further view of He (CN 108097458 A, Machine Translation).
Regarding claim 7, modified Tamaki discloses all of the claim limitations as set forth above.
In addition, Tamaki does disclose that the thermoelectric conversion material can be used in a thermoelectric conversion device ([0087]) and can be used as an n-type element ([0067]).
However, Tamaki does not disclose more of the details regarding the thermoelectric device.
He discloses a thermoelectric device that comprises a p-type element (304) connected to an MgSb alloy n-type element (305) connected by a first electrode (303) and another end of the p-type element (304) connected to a second electrode (306) and the n-type element (305) connected to a third electrode (306) (See Fig. 1 or Fig. 2 [0016]-[0023]).
It would have been obvious to one of ordinary skill in the art at time of filing to modify the n-type thermoelectric element of modified Tamaki by implementing it into a thermoelectric device including a p-type thermoelectric element, first, second and third electrodes as disclosed by He because doing so would allow one to transform thermal energy to electrical energy.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 12069952 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the recited substantially the same thermoelectric conversion material.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVINA PILLAY whose telephone number is (571)270-1180. The examiner can normally be reached Monday-Friday 9:30-6:00.
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, Jeffrey T Barton can be reached at 517-272-1307. 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.
DEVINA PILLAY
Primary Examiner
Art Unit 1726
/DEVINA PILLAY/ Primary Examiner, Art Unit 1726
Prosecution Insights