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 .
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.
Claim Rejections - 35 USC § 112
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.
Claims 1-7 and 16-20 are 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.
Claim 1 contains the limitation “wherein the intermediate layer functions as a lossless waveguide for infrared photons”. It is unclear what structure is required for a “lossless” waveguide. For the purpose of this Office Action, the above limitation will be treated as if it reads “wherein the intermediate layer functions as a waveguide for infrared photons”.
Claims 2-7 and 16-20 are additionally rejected as being dependent on a rejected base claim and including all of the limitations thereof.
Claim 16 contains the limitation “further comprising: a side heat collector positioned both sides of the intermediate layer and configured to absorb heat generated by the emitter”. It is unclear what structure is required by “positioned both sides”. For the purpose of this Office Action, “positioned both sides” in claim 16 will be treated as if it reads “positioned on two sides”.
Claim 17 depends on claim 1 and contains the limitation “further comprising: a thermoelectric module positioned between the side heat collector and the intermediate layer and configured to generate electric energy via thermoelectric conversion”. Claim 1, from which claim 17 depends, does not have antecedent basis for “the side heat collector”. For the purpose of this Office Action, claim 17 will be treated as if it reads “a side heat collector”.
Claim Rejections - 35 USC § 102
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Taylor et al. (US 2020/0357945).
Regarding claim 1, Taylor discloses a thermophotovoltaic device (Figure 2 and abstract) comprising:
an emitter (heat source 104) for emitting photons towards a receiver (converter 110) ([35] and [39]);
an intermediate layer (fiber refractory waveguide 206) comprising a thermal insulating material (sapphire fibers) with a low thermal conductivity of at most 1.4 W/m-K ([36] and [42]), the intermediate layer (206) positioned between the emitter (104) and the receiver (110) (Figure 2, [33] and [41]-[43]); and
the receiver (converter 110) comprising a photovoltaic cell (TPV device) configured to convert at least a portion of the photons into electric energy ([25]-[26] and [39]);
wherein the intermediate layer (206) is bonded to and between the emitter (104) and the receiver (110) to form a zero-gap thermophotovoltaic device (Figure 2 and [41]-[43]) and wherein the intermediate layer (206) functions as a waveguide for infrared photons ([41]-[43]).
The limitation “to replace a vacuum or air gap” is directed to the intended use of the device. Statements in the claim 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. The intermediate layer of Taylor is capable of being used to replace a vacuum or air gap and thus satisfied the intended use limitations.
Regarding claim 2, Taylor discloses all of the claim limitations as set forth above. Taylor additionally discloses that the intermediate layer further comprises a material having a refractive index of at least 1.4 (Figure 2, [38] and [42], fiber Bragg grating 204 can be interpreted as part of the intermediate layer and has a refractive index of 5.7 or 1.45).
Claims 1, 7, 16, 18 and 20 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Holzner et al. (US 2015/0207008) as evidenced by Plissonnier et al. (US 2011/0083711).
Regarding claim 1, Holzner discloses a thermophotovoltaic device in Figures 8A-8B comprising:
an emitter (spectral shaper 3 reads on an “emitter”, [44]) for emitting photons (electromagnetic radiation, [16]-[18]) towards a receiver (photovoltaic cell 7) ([58]-[59]);
an intermediate layer (heat conduction barrier layer 4 can be aerogel, [59]) comprising a thermal insulating material with a low thermal conductivity of at most 1.4 W/m-K (aerogel has a thermal conductivity of less than 0.2 W/m-K, as evidenced by Plissonnier, [28]),
the intermediate layer (4) positioned between the emitter (3) and the receiver (7) (Figures 8A-8B); and
the receiver (photovoltaic cell 7) comprising a photovoltaic cell configured to convert at least a portion of the photons into electric energy ([58]-[59] and [18]);
wherein the intermediate layer (4) is bonded to and between the emitter (3) and the receiver (7) to replace a vacuum or air gap and to form a zero-gap thermophotovoltaic device (Figure 8A and [59], the aerogel replaces a vacuum gap in the device), and
wherein the intermediate layer (4) functions as a waveguide for infrared photons ([55] and [59] and Figures 8A-8B, the layer 4 necessarily functions as a waveguide for the infrared photons to allow the photons to be absorbed by the cell 7).
Regarding claim 7, Holzner discloses all of the claim limitations as set forth above. Holzner additionally discloses that an emitter interface between the intermediate layer and the emitter comprises a surface with a nanometer-scale roughness ([44], nanostructured filter layer reads on emitter interface comprising a surface with nanometer-scale roughness).
Regarding claim 16, Holzner discloses all of the claim limitations as set forth above. Holzner additionally discloses a side heat collector (cooling layer 6) positioned on two sides of the intermediate layer (4) and configured to absorb heat generated by the emitter (Figures 9 and 10 and [60]-[63]).
Regarding claim 18, Holzner discloses all of the claim limitations as set forth above. Holzner additionally discloses that the receiver comprises a heat collector (cooling layer 6) positioned below the photovoltaic cell (7) and configured to absorb heat generated by the emitter (As discussed in [60]-[63], the cooling layer can be on the backside of the cell 7).
Regarding claim 20, Holzner discloses all of the claim limitations as set forth above. Holzner additionally discloses that the photovoltaic cell (7) further comprises a reflector (7.9) (Figure 7 and [57]).
Claims 1-4 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Aixala et al. (EP 3334032A1, see English machine translation provided).
Regarding claim 1, Aixala discloses a thermophotovoltaic device (Figure 5 and [1]) comprising:
an emitter (pads 10 emit infrared flux, [61]-[65] and [82]-[84]) for emitting photons towards a receiver (III-V thermophotovoltaic cell layer 1, [61] and [87]);
an intermediate layer (substrate 12) comprising a thermal insulating material (glass, [85]) with a low thermal conductivity of at most 1.4 W/m-K (glass necessarily has the claimed thermal conductivity, see discussion below regarding material properties),
the intermediate layer (substrate 12) positioned between the emitter (10) and the receiver (1) (Figure 5); and
the receiver (1) comprising a photovoltaic cell configured to convert at least a portion of the photons into electric energy ([61] and [87]);
wherein the intermediate layer (12) is bonded to and between the emitter (10) and the receiver (1) to form a zero-gap thermophotovoltaic device (Figure 5, there are no gaps between the emitter and receiver in the device of Aixala), and
wherein the intermediate layer (12) functions as a waveguide for infrared photons ([44]-[45], [85] and Figure 5, the layer 12 guides the infrared photons to the receiver).
The limitation “to replace a vacuum or air gap” is directed to the intended use of the device. Statements in the claim 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. The intermediate layer of Aixala is capable of being used to replace a vacuum or air gap and thus satisfied the intended use limitations.
The intermediate layer (12) of Aixala is made of glass ([85]) which is the same material as the intermediate layer claimed (claim 4) and disclosed in the instant specification ([19]-[20]), thus it will necessarily display the claimed properties of “a thermal insulating material with a low thermal conductivity of at most 1.4 W/m-K”.
As discussed in MPEP 2112.01, “When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent.
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Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "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). Additionally, if the composition is physically the same, it must have the same properties. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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”.
Regarding claim 2, Aixala discloses all of the claim limitations as set forth above. Aixala additionally discloses that the intermediate layer further comprises a material having a refractive index of at least 1.4 (glass has a refractive index of 1.5).
Regarding claim 3, Aixala discloses all of the claim limitations as set forth above. Aixala additionally discloses that the intermediate layer (12) comprises a substantially infrared and visible spectrum-transparent material (glass, [85], [44] and Figure 5).
Regarding claim 4, Aixala discloses all of the claim limitations as set forth above. Aixala additionally discloses that the intermediate layer (12) comprises glass ([85]).
Regarding claim 7, Aixala discloses all of the claim limitations as set forth above. Aixala additionally discloses an emitter interface between the intermediate layer (intermediate layer can be interpreted as including layers 2 and 12) and the emitter (10) comprises a surface with a nanometer-scale roughness (The surface of the emitter facing toward the intermediate layer has a nanometer scale pattern, Figure 1, [61], [81]).
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 5 is rejected under 35 U.S.C. 103 as being unpatentable over Aixala et al. (EP 334032A1, see English machine translation provided), as applied to claim 1 above, in view of Greiff et al. (US 2010/0319749).
Regarding claim 5, Aixala discloses all of the claim limitations as set forth above. Aixala does not disclose that a receiver interface between the intermediate layer and the receiver comprises optical epoxy.
Greiff discloses a thermophotovoltaic device in Figure 2 comprising an emitter (1), a receiver (PV cell 2) and an intermediate layer (window layer 3) between the emitter (1) and the receiver (2) ([20]), wherein a receiver interface (adhesive layer 4) between the intermediate layer (3) and the receiver (2) comprises optical epoxy ([23]).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to add an optical epoxy between the intermediate layer and the receiver of Aixala, as taught by Greiff, in order to form a secure bond between the receiver and the intermediate layer without voids, cracking or delamination (Grieff, [22]-[23]).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Aixala et al. (EP 334032A1, see English machine translation provided), as applied to claim 1 above, in view of Jeong et al. (US 2011/0244692).
Regarding claim 6, Aixala discloses all of the claim limitations as set forth above. Aixala does not disclose that a receiver interface between the intermediate layer and the receiver comprises a first nano-pattern fabricated on a surface of the receiver and a second interconnecting nano-pattern on a surface of the intermediate layer.
Jeong discloses that nanopatterning surfaces in a photovoltaic cell can increase the light absorption in the device ([117]).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to add a first nano-pattern fabricated on a surface of the receiver and a second interconnecting nano-pattern on a surface of the intermediate layer to the receiver interface between the receiver and the intermediate layer of Aixala, as taught by Jeong, because providing nano-texture to the interface layers can reduce the reflectivity and increase absorption in the device (Jeong, [89]-[92] and [117]).
Claims 17 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Holzner et al. (US 2015/0207008), as applied to claim 1 above, in view of Hickman et al. (US 2016/0190371).
Regarding claim 17, Holzner discloses all of the claim limitations as set forth above. Holzner does not disclose a thermoelectric module positioned between a side heat collector and the intermediate layer and configured to generate electric energy via thermoelectric conversion.
Hickman discloses a thermophotovoltaic device in Figure 1A comprising a thermoelectric module (300) configured to generate electric energy via thermoelectric conversion ([19]).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to add a thermoelectric module positioned between a side heat collector and the intermediate layer and configured to generate electric energy via thermoelectric conversion to the device of Holzner, as taught by Hickman, because it would amount to the combination of prior art elements according to known methods to yield predictable results.
Regarding claim 19, Holzner discloses all of the claim limitations as set forth above. Holzner does not explicitly disclose that the photovoltaic cell comprises a P region, a depletion region, and an N region in order from the intermediate layer.
Hickman discloses a thermophotovoltaic device in Figure 1 comprising a photovoltaic cell (100) comprising a P region (150), a depletion region, and an N region (140) ([19]).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify the photovoltaic cell of Holzner such that the photovoltaic cell comprises a P region, a depletion region, and an N region in order from the intermediate layer, as taught by Hickman, because it would amount to the combination of prior art elements according to known methods to yield predictable results.
Response to Arguments
Applicant's arguments filed 3/03/2026 have been fully considered but they are not persuasive.
Applicant argues that the Taylor, Holzner and Aixala references do not disclose the added claim limitations of “wherein the intermediate layer is bonded to and between the emitter and the receiver to replace a vacuum or air gap and to form a zero-gap thermophotovoltaic device, and wherein the intermediate layer functions as a lossless waveguide for infrared photons”.
Examiner respectfully disagrees. First, it is noted that the structural requirement of a “lossless” waveguide is unclear and the term “lossless” has not been further treated on the merits. Second, the limitation “to replace a vacuum or air gap” is directed to the intended use of the device. Statements in the claim 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. The intermediate layers of Taylor, Holzner and Aixala are all bonded to and between the emitter and the receiver and are capable of being used to replace a vacuum or air gap and thus satisfied the intended use limitations. Third, the intermediate layers of Taylor, Holzner and Aixala are all between the emitter and receiver in the devices and all guide infrared photons to the receiver which satisfies the limitation “wherein the intermediate layer functions as a waveguide for infrared photons”.
Conclusion
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 LINDSEY A BUCK whose telephone number is (571)270-1234. The examiner can normally be reached Monday-Friday 9am-5:30pm.
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, Matthew Martin can be reached at (571)270-7871. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LINDSEY A BUCK/Primary Examiner, Art Unit 1728
