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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-2 and 11-23 in the reply filed on 01/08/2026 is acknowledged. The traversal is on the ground(s) that the subject matter of each of the designated inventions would encompass a search for the subject matter of the remaining designated inventions, and that the search and examination of the entire application could be made without serious burden. This is not found persuasive because as set forth in MPEP § 801, “This chapter is limited to a discussion of the subjects of restriction and double patenting under Title 35 of the United States Code and Title 37 of the Code of Federal Regulations as it relates to national applications filed under 35 U.S.C. 111(a). The discussion of unity of invention under the Patent Cooperation Treaty Articles and Rules as it is applied as an International Searching Authority, International Preliminary Examining Authority, and in applications entering the National Stage under 35 U.S.C. 371 as a Designated or Elected Office in the U.S. Patent and Trademark Office is covered in MPEP Chapter 1800.”
As set forth in the Restriction Requirement, as provided in 37 CFR 1.475(a), a
national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The requirement is still deemed proper and is therefore made FINAL.
Claims 24-28 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 01/08/2026.
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 19-23 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 19 recites the limitation "the first electrode portion" in lines 3 and 4. There is insufficient antecedent basis for this limitation in the claim. Claims 20-23 are rejected due to their respective dependence on claim 19.
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)(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 Cho et al. (JP 2009194299A – see attached machine translation).
Regarding claim 1, Cho discloses a thermoelectric module array ([0008]) comprising a first thermoelectric module and a second thermoelectric module disposed adjacent to the first thermoelectric module (shown in annotated Fig. 11 below; it is noted that the limitation “adjacent” does not require direct physical contact or the absence of intermediate components), wherein the first thermoelectric module includes: a first lower substrate (shown in annotated Fig. 11 below; it is noted that the limitation “lower” is dependent on the spatial orientation of the device); a plurality of semiconductor elements disposed on the first lower substrate ([0021]); and a first upper substrate disposed on the plurality of semiconductor elements (shown in annotated Fig. 11 below; it is noted that the limitation “on” does not require direct physical contact or the absence of intermediate components), the second thermoelectric module includes: a second lower substrate (shown in annotated Fig. 11 below; it is noted that the limitation “lower” is dependent on the spatial orientation of the device); a plurality of semiconductor elements disposed on the second lower substrate ([0021]); and a second upper substrate disposed on the plurality of semiconductor elements (shown in annotated Fig. 11 below; it is noted that the limitation “on” does not require direct physical contact or the absence of intermediate components), the first lower substrate includes a first groove formed on an outer surface of the first lower substrate (shown in annotated Fig. 11 below), the second lower substrate includes a second groove formed on an outer surface of the second lower substrate (shown in annotated Fig. 11 below), and the first groove and the second groove are disposed at positions corresponding to each other to form one hole (the first groove and the second groove depicted in annotated Fig. 11 below are at positions corresponding to each other and form a hole in the respective substrates).
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Regarding claim 2, Cho discloses all the claim limitations as set forth above. Cho
further discloses the plurality of semiconductor elements disposed on the
first lower substrate include 1-1 semiconductor elements disposed in a first region of the first lower substrate and 1-2 semiconductor elements disposed in a second region of the first lower substrate (shown in annotated Fig. 11 above), the plurality of semiconductor elements disposed on the second lower substrate include 2-1 semiconductor elements disposed in a third region of the second lower substrate and 2-2 semiconductor elements disposed in a fourth region of the second lower substrate (shown in annotated Fig. 11 above).
With regard to the limitation “the first upper substrate includes a 1-1 upper substrate disposed on the 1-1 semiconductor elements and 1-2 upper substrate disposed on the 1-2 semiconductor elements, and the second upper substrate includes a 2-1 upper substrate disposed on the 2-1 semiconductor elements and a 2-2 upper substrate disposed on the 2-2 semiconductor elements,” the limitation does not require a structural difference between a substrate comprising two substrates, and a substrate comprising a single substrate, therefore, the first and second upper substrates of Cho satisfy the limitation requiring each substrate to include two substrates because the limitation requiring each substrate to include two substrates is directed to the manner in which the apparatus is made, and it is noted that said limitations are not given patentable weight in the product claims. Even though a product-by-process is defined by the process steps by which the product is made, determination of patentability is based on the product itself and does not depend on its method of production. In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985).
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 2, 11-12, and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Cho et al. (JP 2009194299A – see attached machine translation) as applied to claim 1 above, in view of Jeon (KR 20190085705 A – see attached machine translation).
Regarding claim 2, Cho discloses all the claim limitations as set forth above.
While Cho does disclose the plurality of semiconductor elements disposed on the
first lower substrate include 1-1 semiconductor elements disposed in a first region of the first lower substrate and 1-2 semiconductor elements disposed in a second region of the first lower substrate (shown in annotated Fig. 11 above), the plurality of semiconductor elements disposed on the second lower substrate include 2-1 semiconductor elements disposed in a third region of the second lower substrate and 2-2 semiconductor elements disposed in a fourth region of the second lower substrate (shown in annotated Fig. 11 above); Cho does not explicitly disclose the first upper substrate includes a 1-1 upper substrate disposed on the 1-1 semiconductor elements and 1-2 upper substrate disposed on the 1-2 semiconductor elements, and the second upper substrate includes a 2-1 upper substrate disposed on the 2-1 semiconductor elements and a 2-2 upper substrate disposed on the 2-2 semiconductor elements.
Jeon discloses a thermoelectric module array ([0028]) and further discloses a substrate comprising a plurality of substrates ([0078]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the upper substrates of Cho such that each substrate includes a plurality of substrates, as disclosed by Jeon, because as taught by Jeon, a plurality of first substrates (110) included in a plurality of thermoelectric elements (100) forming one thermoelectric module may be formed integrally ([0078]).
Based on the teaching of Jeon, forming a substrate of a thermoelectric module with a plurality of substrates amounts to the use of a known configuration 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 upper substrates of Cho with multiple substrates based on the teaching of Jeon.
Regarding claim 11, modified Cho discloses all the claim limitations as set forth above.
While modified Cho does not explicitly disclose the first groove and the second groove are disposed at a position corresponding to a region between the 1-1 upper substrate and the 1-2 upper substrate, it would have been obvious to one skilled in the art at the time the invention was filed to form the first and second grooves of Cho at a position corresponding to a region between the 1-1 and 1-2 upper substrates because such a modification amounts to the rearranging of the parts of an invention, rearranging parts of an invention involves only routine skill in the art while the device having the claimed dimensions would not perform differently than the prior art device, In re Japikse, 86 USPQ 70.
Regarding claim 12, modified Cho discloses all the claim limitations as set forth above. Modified Cho further discloses a frame disposed on the first lower substrate and the second lower substrate ([0012]; 41 in annotated Fig. 11 above; it is noted that the limitation “disposed on” does not require direct physical contact or the absence of intermediate components) and disposed between the first upper substrate and the second upper substrate ([0012]; 41 in annotated Fig. 11 above), wherein the frame includes a hole corresponding to the first groove and the second groove (the space between the edge of 41 and the nearest first and second groove, as depicted in annotated Fig. 11 above, satisfies the limitation requiring “a hole corresponding to the first groove and the second groove).
Regarding claim 14, modified Cho discloses all the claim limitations as set forth above. Modified Cho further discloses a connecting electrode connecting the first region and the second region (Cho - 81 in Fig. 9; [0032]), wherein the first groove and the second groove overlap each other along a direction perpendicular to a direction in which the connecting electrode extends (the first groove and the second groove in annotated Fig. 11 above overlap each other along a direction perpendicular to a direction in which 81 extends in Fig. 9 of Cho).
Regarding claim 15, modified Cho discloses all the claim limitations as set forth above. Modified Cho further discloses a fastening member disposed in the first groove and the second groove (shown in annotated Fig. 11 above), wherein the first upper substrate includes a first cut portion, the second upper substrate includes a second cut portion, and the first cut portion and the second cut portion are corner portions of the first upper substrate and the second upper substrate adjacent to the fastening member (portions depicted in annotated Fig. 11 above).
It is noted that with regard to the limitation “cut,” the limitation is directed to the manner in which the product is made, and it is noted that said limitations are not given patentable weight in the product claims. Even though a product-by-process is defined by the process steps by which the product is made, determination of patentability is based on the product itself and does not depend on its method of production. In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985).
Regarding claim 16, modified Cho discloses all the claim limitations as set forth above. Modified Cho further discloses the frame has a shape corresponding to the first cut portion and the second cut portion (Cho – 41 in Cho has a shape which, in relation to the first and second cut portions depicted in annotated Fig. 11 above, satisfies the limitation “corresponding to the first cut portion and the second cut portion”).
It is noted that with regard to the limitation “cut,” the limitation is directed to the manner in which the product is made, and it is noted that said limitations are not given patentable weight in the product claims. Even though a product-by-process is defined by the process steps by which the product is made, determination of patentability is based on the product itself and does not depend on its method of production. In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Cho et al. (JP 2009194299A – see attached machine translation) in view of Jeon (KR 20190085705 A – see attached machine translation) as applied to claim 12 above, and further in view of Akiyama et al. (US 2012/0325280).
Regarding claim 13, modified Cho discloses all the claim limitations as set forth above.
Modified Cho does not explicitly disclose the frame is disposed between the 1-1 upper substrate and the 1-2 upper substrate and between the 2-1 upper substrate and the 2-2 upper substrate.
Akiyama discloses a thermoelectric module array (Fig. 7) and further discloses a frame disposed between the upper substrates of the module (4 in Fig. 7).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the frame of modified Cho such that it is disposed between the upper substrates, as disclosed by Akiyama, because as evidenced by Akiyama, the use of the disclosed structural arrangement amounts to the use of a known configuration 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 frame of modified Cho such that it is disposed between the respective upper substrates based on the teaching of Akiyama.
Claims 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Cho et al. (JP 2009194299A – see attached machine translation) as applied to claim 1 above, in view of Park et al. (KR 20200144316 A – see attached machine translation).
Regarding claim 17, Cho discloses all the claim limitations as set forth
above.
Cho does not explicitly disclose a first insulating layer disposed between the first lower substrate and the plurality of semiconductor elements; and a second insulating layer disposed between the plurality of semiconductor elements and the first upper substrate.
Park discloses a thermoelectric module (Fig. 5) and further discloses a first insulating layer disposed between a lower substrate and a plurality of semiconductor elements (320 in Fig. 5), and a second insulating layer disposed between the plurality of semiconductor elements and the upper substrate (374 in Fig. 5).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to include insulating layers, as disclosed by Park, between the upper and lower substrates and the plurality of semiconductor elements of Cho, because as evidenced by Park, the placement of insulating layers between a substrate and a plurality of semiconductor elements in a thermoelectric module amounts to the use of known components/materials in the art for their intended purpose to achieve an expected result, and one skilled in the art would have a reasonable expectation of success when including insulating layers between the respective substrate of Cho and the plurality of semiconductor elements based on the teaching of Park.
Based on the teachings of Cho and Park set forth above, the claimed subject matter merely combines familiar elements according to known methods and does no more than yield predictable results. See MPEP 2143 |. A. and KSR v. Teleflex (Supreme Court 2007).
Regarding claim 18, modified Cho discloses all the claim limitations as set forth above. Modified Cho further discloses a third insulating layer disposed between the first insulating layer and the plurality of semiconductor elements (Park – 330 in Fig. 5).
Claims 19-23 are rejected under 35 U.S.C. 103 as being unpatentable over Cho et al. (JP 2009194299A – see attached machine translation) as applied to claim 1 above, in view of Cho et al. (KR 20200140015 A – see attached machine translation, hereinafter referred to as Cho ‘015).
Regarding claim 19, Cho discloses all the claim limitations as set forth above.
While Cho does disclose the first thermoelectric module further includes a first
electrode part disposed on the first lower substrate (electrode connecting 21 and 22 in Fig. 8; it is noted that the limitation “disposed on” does not require direct physical contact or the absence of intermediate components), an extension electrode extending to one side from the first electrode portion on the first lower substrate (25 in Fig. 8); Cho does not explicitly disclose an insulating member disposed on the extension electrode.
Cho ‘015 discloses a thermoelectric device ([0054]) and further discloses an insulating member (330 in Fig. 5; [0071]; 190 in Fig. 4; [0054]) disposed on an extension electrode ([0039]; 181 in Fig. 2).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to include an insulating member, as disclosed by Cho ‘015, on the extension electrode of Cho, because as taught by Cho ‘015, sealing protects against external moisture, heat, contamination, etc. ([0054]).
Additionally, as evidenced by Cho ‘015, the use of an insulating member disposed on an extension electrode of a thermoelectric module amounts to the use of a known component/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 including an insulating member on the extension electrode of Cho based on the teaching of Cho ‘015.
Regarding claim 20, modified Cho discloses all the claim limitations as set forth above.
While modified Cho does not explicitly disclose a ratio of a distance from an end of the first lower substrate to a closest semiconductor element among the plurality of semiconductor elements to a distance from the extension electrode to the end of the first lower substrate is 1.5 or more and 3.5 or less, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the extension electrode of modified Cho such that a ratio of a distance from an end of the first lower substrate to a closest semiconductor element among the plurality of semiconductor elements to a distance from the extension electrode to the end of the first lower substrate is 1.5 or more and 3.5 or less, because such a modification would have involved a mere change in the size (or dimension) of a component. A change in size (dimension) is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and the device having the claimed dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device, Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Regarding claim 21, modified Cho discloses all the claim limitations as set forth above.
While modified Cho does not explicitly disclose a ratio of a height of the insulating member to the distance from the extension electrode to the end of the first lower substrate is 0.25 or more and 0.7 or less, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the insulating member such that a ratio of a height of the insulating member to the distance from the extension electrode to the end of the first lower substrate is 0.25 or more and 0.7 or less, because such a modification would have involved a mere change in the size (or dimension) of a component. A change in size (dimension) is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and the device having the claimed dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device, Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Regarding claim 22, modified Cho discloses all the claim limitations as set forth above. Modified Cho further discloses the insulating member includes a resin portion (Cho ‘015 - 330 in Fig. 5; [0071]) and an insulating frame (Cho ‘015 - 190 in Fig. 4; [0054]) having an opening (Cho ‘015 - G in Fig. 4) formed to accommodate the resin portion (Cho ‘015 - 190 in Fig. 4 accommodates 330 in Fig. 5).
Regarding claim 23, modified Cho discloses all the claim limitations as set forth above. Modified Cho further discloses the opening is disposed in a position corresponding to the extension electrode (Cho ‘015 – G in Fig. 4; [0054]), and wherein the resin portion is disposed on the extension electrode (Cho ‘015 - 330 in Fig. 5; [0071]).
Conclusion
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/TAMIR AYAD/Primary Examiner, Art Unit 1726