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 without traverse of species A in the reply filed on 07/13/2026 is acknowledged.
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.
Claim 1 and 13 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 recites “a minimum thickness in a direction from the first substrate toward the second substrate of the second region is greater than a maximum thickness of the first insulating layer”. It is unclear which minimum thickness is referred to or “the minimum thickness of what”. For the purpose of examination, the minimum thickness of second insulating layer in second region is greater than the maximum thickness of the first insulating layer.
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.
Claim(s) 1-8, 11-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tashiro (JP2016092027, English translation is provided), and further in view of KR 20130035016, hereinafter as ‘016
Regarding claim 1, Tashiro teaches a thermoelectric device comprising:
a first substrate 4 [fig 2 abstract];
a second insulating layer 3 disposed on substrate [fig 2];
a first electrode (21,5) disposed on the second insulating layer [fig 2];
a semiconductor structure disposed on the first electrode (11,12) [fig 2];
a second electrode 22 disposed on the semiconductor structure [fig 2 abstract];
Tashiro teaches the claimed limitation as set forth above, but Tashiro does not teach the first insulating layer, second substrate as claimed.
‘016 teaches a thermoelectric device comprising the first substrate 111, second substate 121, insulating layer 112 and insulating layer 122 [fig 2 3 a b description embodiment]. Also, ‘016 teaches there being an oxide thin film 123 between the first substrate 111, second substate 121, insulating layer 112 and insulating layer 122 [description embodiment] where the thickness of the oxide thin film 123 is smaller than that of insulating layer 112 and 122 [fig 3a b].
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to include the oxide layer 123 of ‘061 between second insulating layer and first substrate as taught by Tashiro or to replace the first substrate of Tashiro by the substrate and first insulating layer of ‘016 for improving adhesive. Also, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to add the first substrate and two insulating layers of ‘016 to the second electrode 22 as taught by ‘016 since the claimed subject matter merely combines familiar elements according to known methods and does no more than yield predictable results. See MPEP 2141 (III) Rationale A,KSR v. Teleflex (Supreme Court 2007).
As for combination, modified Tashiro teaches:
a first insulating layer disposed on the first substrate;
wherein the second insulating layer includes a first region where the first electrode is disposed and a second region wherein the first electrode is not disposed
a second substrate disposed on the second electrode
A minimum thickness in a direction from the first substrate toward the second substrate of the second region is greater than a maximum thickness of the first insulating layer [fig 2, Tashiro]
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Regarding claim 2, modified Tashiro teaches the first insulating layer 3 and the second insulating layer including different materials where the insulating layer 3 is made of resin material and the second insulating layer 123 is metal oxide.
Regarding claim 3, modified Tashiro teaches a third insulating layer 122 disposed between the second electrode and the second substrate as in claim 1.
Regarding claim 4, modified Tashiro teaches the second insulating layer includes a first recess formed in the first region and a second recess formed in the second region [fig 4].
Regarding claim 5, a thickness of the third insulating layer 122 is greater than a thickness of the first insulating layer 123 [fig 3 a b].
Regarding claim 6, modified Tashiro teaches a fourth insulating layer (metal oxide layer 123) disposed between the third insulating layer 122 and the second substrate as in claim 1.
Regarding claim 7, modified Tashiro teaches the first insulating layer and the second insulating layer having different elasticities (the first insulating layer is metal oxide while the second insulating layer is epoxy resin).
Regarding claim 8. Modified Tashiro teaches the claimed limitation, but modified Tashiro does not teach the thickness of the second insulating layer compared to first insulating layer as claimed.
‘016 teaches the thickness of second insulating layer 112 or 122 being controlled for improving adhesion and heat transfer efficiency (description section).
The court has held that absent evidence of criticality or unexpected results, optimization of a result effective variable will not support the patentability of subject matter encompassed by the prior art."[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP§ 2144.05, II.).
Therefore, absent the showing of criticality or unexpected results, it would be obvious to one of ordinary skill in the art to modify the thickness of the second insulating layer of modified Tashiro to arrive the claimed range for improving adhesion and heat transfer efficiency (description section).
Regarding claim 11, modified Tashiro teaches a highest height of the first electrode based on the first substrate is higher than a highest height of the second insulating layer [fig 2].
Regarding claim 12, modified Tashiro teaches the first substrate is a metal substrate (description section).
Regarding claim 13, Tashiro teaches a thermoelectric device comprising:
a first substrate 4 [fig 2 abstract];
a second insulating layer 3 disposed on substrate [fig 2];
a first electrode (21,5) disposed on the second insulating layer [fig 2];
a semiconductor structure disposed on the first electrode (11,12) [fig 2];
a second electrode 22 disposed on the semiconductor structure [fig 2 abstract];
Tashiro teaches the claimed limitation as set forth above, but Tashiro does not teach the first insulating layer, second substrate as claimed.
‘016 teaches a thermoelectric device comprising the first substrate 111, second substate 121, insulating layer 112 and insulating layer 122 [fig 2 3 a b description embodiment]. Also, ‘016 teaches there being an oxide thin film 123 between the first substrate 111, second substate 121, insulating layer 112 and insulating layer 122 [description embodiment] where the thickness of the oxide thin film 123 is smaller than that of insulating layer 112 and 122 [fig 3a b].
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to include the oxide layer 123 of ‘061 between second insulating layer and first substrate as taught by Tashiro or to replace the first substrate of Tashiro by the substrate and first insulating layer of ‘016 for improving adhesive. Also, It would have been obvious to one of ordinary skill in the art at the time the invention was filed to add the first substrate and two insulating layers of ‘016 to the second electrode 22 as taught by ‘016 since the claimed subject matter merely combines familiar elements according to known methods and does no more than yield predictable results. See MPEP 2141 (III) Rationale A,KSR v. Teleflex (Supreme Court 2007).
As for combination, modified Tashiro teaches:
the first insulating layer disposed on the first substrate.
wherein the second insulating layer includes a first region where the first electrode is disposed and a second region wherein the first electrode is not disposed
a second substrate disposed on the second electrode
A minimum thickness in a direction from the first substrate toward the second substrate of the second region is greater than a maximum thickness of the first insulating layer [fig 2, Tashiro]
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Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tashiro (JP2016092027, English translation is provided), and KR 20130035016, further in view of WO 9856047, hereinafter as ‘047.
Regarding claim 9, modified Tashiro teaches the first insulating layer layer being oxide film, but modified Tashiro does not teach the thickness of the first insulating layer.
‘047 teaches a thermoelectric battery comprising oxide film where the oxide film has thickness of 3 to 150 micron [description section].
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the thickness of the first insulating layer of modified Tashiro to be the same of ‘947 since such modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re rose, 105 USPQ 237 (CCPA 1955).
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tashiro (JP2016092027, English translation is provided), and KR 20130035016, further in view of Lee et al (PG pub 20150333246).
Regarding claim 10, modified Tashiro teaches the claimed limitation, but modified Kurihara et al does not teach the heights of the side surfaces as claimed.
Lee et al teaches the electrode being partially embedded into the substrate 110B where the height of the electrode is embedded about 0.5 [fig 8].
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the electrode of modified Kurihara et al to be partially half embedded into the insulating layer for stably mounted [para 30].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to UYEN M TRAN whose telephone number is (571)270-7602. The examiner can normally be reached Monday-Friday 9am-6pm.
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/UYEN M TRAN/ Primary Examiner, Art Unit 1726
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