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 1-9, in the reply filed on 02/23/2026 is acknowledged. The traversal is on the ground(s) that it is believed the Examiner may consider all the claims without conducting an unreasonably burdensome search. This is not found persuasive because, as set forth in the Restriction Requirement, restriction is required under 35 U.S.C. 121 and 372. The groups of inventions listed do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons: Group I, Group II, and Group III lack unity of invention because even though the inventions of these groups require the technical feature of a plurality of hot-side heat exchange plates for receiving a heating thermal fluid; a plurality of cold-side heat exchange plates for receiving a coolant thermal fluid, the cold-side heat exchange plates and hot-side heat exchange plates being interleaved such that each hot-side heat exchange plate is positioned intermediate a respective pair of cold-side heat exchange plates, for each adjacent hot-side heat exchange plate and cold-side heat exchange plate, a respective TEG element layer interposed between the hot-side heat exchange plate and the cold-side heat exchange plate, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Yukawa et al. (US 2018/0287036, cited on 01/16/2025 IDS and 08/24/2023 ISR). Specifically, Yukawa discloses a plurality of hot-side heat exchange plates for receiving a heating thermal fluid; a plurality of cold-side heat exchange plates for receiving a coolant thermal fluid (Fig. 1, plates 2 and 3, para. 52), the cold-side heat exchange plates and hot-side heat exchange plates being interleaved such that each hot-side heat exchange plate is positioned intermediate a respective pair of cold-side heat exchange plates (Fig. 1, para 6), for each adjacent hot-side heat exchange plate and cold-side heat exchange plate, a respective TEG element layer interposed between the hot-side heat exchange plate and the cold-side heat exchange plate (para. 6).
The requirement is still deemed proper and is therefore made FINAL.
Claims 10-16 and 18-20 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 02/23/2026.
Claim Objections
Claim 1 is objected to because of the following informalities: line 9 of claim 1 appears to be missing the word “is” between the words “layer” and “interposed.” Appropriate correction is required.
Claim 3 is objected to because of the following informalities: claim 3 recites “for each TEG element layer, an insulating material at least partially filling gaps between the TEG elements of the TEG element layer,” however, in order to avoid redundancy, the recitation will be treated as if it states for each TEG element layer, an insulating material at least partially fills gaps between the TEG elements. Appropriate correction is required.
Claim 5 is objected to because of the following informalities: claim 5 includes a comma at the end of the claim. Appropriate correction is required.
Claim 6 is objected to because of the following informalities: line 5 of claim 6 appears to be missing the word “of” between the phrase “fluid outlets” and the phrase “the hot-side heat exchange plates.” Appropriate correction is required.
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 2 and 3 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. Specifically, claim 2 recites the limitation "the TEG layer" in line 1, however, there is insufficient antecedent basis for this limitation in the claim. Line 9 of claim 1 recites “for each adjacent hot-side heat exchange plate and cold-side heat exchange plate, a respective TEG element layer interposed between the hot-side heat exchange plate and the cold-side heat exchange plate,” and it is unclear as to whether the limitation “the TEG layer” in line 1 of claim 2 refers to each respective TEG element layer, or whether the limitation is referring to a single TEG layer from among the previously recited TEG element layers. Claim 3 is rejected due to its dependence on claim 2.
Claims 2 and 3 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. Specifically, claim 2 recites the limitation "each TEG module" in line 2. There is insufficient antecedent basis for this limitation in the claim. Claim 3 is rejected due to its dependence on claim 2.
Claims 2 and 3 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. Specifically, claim 2 recites the limitation "the TEG elements" in lines 3 and 4. There is insufficient antecedent basis for this limitation in the claim. It is unclear as to whether the limitation “the TEG element” in lines 3 and 4 of claim 2 refers to each of the previously recited plurality of TEG elements, or refers to a TEG element from among the previously recited plurality of TEG elements. Claim 3 is rejected due to its dependence on claim 2.
Claims 2 and 3 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. Specifically, claim 2 recites the limitations “the hot sides of the TEG elements” and “the cold sides of the TEG elements” in lines 4 and 5, respectively. There is insufficient antecedent basis for these limitations in the claim. Claim 3 is rejected due to its dependence on claim 2.
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 1-6 and 8-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yukawa et al. (US 2018/0287036, cited on 01/16/2025 IDS).
Regarding claim 1, Yukawa discloses a thermoelectric generator apparatus (abstract) comprising: a plurality of hot-side heat exchange plates (2 in Fig. 1; [0052]); a plurality of cold-side heat exchange plates (3 in Fig. 1; [0052]; it is noted that with regard to the limitations “hot-side” and “cold-side;” plates 2 and 3 in Fig. 1 are capable of being used as “hot-side” and “cold-side” plates ([0052]) and therefore satisfy the limitations); the cold-side heat exchange plates and hot-side heat exchange plates being interleaved such that each hot-side heat exchange plate is positioned intermediate a respective pair of cold-side heat exchange plates (2 in relation to 3 in Fig. 1); and for each adjacent hot-side heat exchange plate and cold-side heat exchange plate, a respective TEG element layer is interposed between the hot-side heat exchange plate and the cold-side heat exchange plate (5 in relation to 2 and 3 in Fig. 1; [0029]).
While Yukawa does disclose the plurality of hot-side heat exchange plates for receiving a heating thermal fluid ([0052]), and a plurality of cold-side heat exchange plates for receiving a coolant thermal fluid ([0052]), it is noted that with regard to the limitations “for receiving a heating thermal fluid” and “for receiving a coolant thermal fluid,” the limitations are 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.
Neither the manner of operating a disclosed device nor material or article worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP § 2114 and 2115. Further, it has been held that process limitations do not have patentable weight in an apparatus claim. See Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969) that states “Expressions relating the apparatus to contents thereof and to an intended operation are of no significance in determining patentability of the apparatus claim.”
Regarding claim 2, Yukawa discloses all the claim limitations as set forth above. Yukawa further discloses the TEG element layer comprises a plurality of TEG elements ([0006] L3 discloses 5 contains at least one thermoelectric element), wherein the hot side of each TEG element layer is positioned adjacent each of the hot-side heat exchange plates ([0019]), and the cold side of each TEG element layer is positioned adjacent each of the cold-side heat exchange plates ([0019]).
With regard to the limitation “each TEG element layer comprises a hot side and a cold side and configured for thermoelectric generation of electricity when a heat gradient is applied across the TEG element layer,” 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.
Regarding claim 3, Yukawa discloses all the claim limitations as set forth above. Yukawa further discloses for each TEG element layer, an insulating material at least partially fills gaps between the TEG elements (17 in Fig. 4; [0033]).
Regarding claim 4, Yukawa discloses all the claim limitations as set forth above.
With regard to the limitation “the hot-side heat exchange plates form a condenser for receiving the heating thermal fluid as a first vapor and condensing the thermal fluid to a first liquid; and the cold-side heat exchange plates form an evaporator for receiving the coolant thermal fluid as a second liquid and evaporating the thermal fluid to a second vapor,” neither the manner of operating a disclosed device nor material or article worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP § 2114 and 2115. Further, it has been held that process limitations do not have patentable weight in an apparatus claim. See Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969) that states “Expressions relating the apparatus to contents thereof and to an intended operation are of no significance in determining patentability of the apparatus claim.”
Regarding claim 5, Yukawa discloses all the claim limitations as set forth above. Yukawa further discloses the hot-side heat exchange plates each comprise a respective heating thermal fluid inlet and heating thermal fluid outlet (2C and 2E in Fig. 3; [0052]), the cold-side heat exchange plates each comprise a respective coolant thermal fluid inlet and coolant thermal fluid outlet (3F and 3D in Fig. 3; [0052]).
Regarding claim 6, Yukawa discloses all the claim limitations as set forth above. Yukawa further discloses a heating thermal fluid supply line ([0052] discloses high temperature fluid supplied to the high temperature fluid inlet hole 44C sequentially passes through the first holes 2C, 3C and 41C) coupled in parallel to heating thermal fluid inlets of the hot-side heat exchange plates ([0052] discloses high temperature fluid supplied to the high temperature fluid inlet hole 44C sequentially passes through the first holes 2C, 3C and 41C); a heating thermal fluid return line coupled in parallel to the heating thermal fluid outlets of the hot-side heat exchange plates ([0052] discloses the high temperature fluid through 2E, 3E and 41E and is discharged from the high temperature fluid outlet hole 44E); a coolant thermal fluid supply line coupled in parallel to coolant thermal fluid inlets of the cold-side heat exchange plates ([0052] discloses the low temperature fluid supplied to the low temperature fluid inlet hole 44F sequentially passes through the fourth holes 41F, 2F and 3F); and a coolant thermal fluid return line coupled in parallel to coolant thermal fluid outlets of the cold-side heat exchange plates ([0052] discloses the low temperature fluid through 3D, 2D and 41D and is discharged from the low temperature fluid outlet hole 44D).
Regarding claim 8, Yukawa discloses all the claim limitations as set forth above. Yukawa further discloses first and second end plates (44 and 45 in Fig. 1), wherein the hot-side heat exchange plates, the cold-side heat-exchange plates, and the TEG element layers are secured between the first and second end plates (2, 3, and 5 in relation to 44 and 45 in Fig. 1).
Regarding claim 9, Yukawa discloses all the claim limitations as set forth above. Yukawa further discloses biasing elements to apply a compressive force to the first and second end plates, hot-side heat exchange plates, the cold-side heat exchange plates, and the TEG element layers ([0047]).
It is noted that with regard to the limitation “to apply a compressive force to the first and second end plates, hot-side heat exchange plates, the cold-side heat exchange plates, and the TEG element layers,” 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.
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 7 is rejected under 35 U.S.C. 103 as being unpatentable over Yukawa et al. (US 2018/0287036, cited on 01/16/2025 IDS) as applied to claim 6 above, in view of Oehrlein et al. (EP 4124808 A1 – see attached machine translation).
Regarding claim 7, Yukawa discloses all the claim limitations as set forth above.
Yukawa does not explicitly disclose a pressure equalization line connected
between the heating thermal fluid supply line and the heating thermal fluid return line.
Oehrlein discloses a heating device with a heat generator for heating a heating fluid with a supply line for delivering the heating fluid and with a return line for receiving the heating fluid, as well as a bypass line that connects the return line to the supply line and with a valve in the bypass line ([0001]). Oehrlein further discloses that the valve is arranged in such a way that pressure equalization can take place from the supply line to the return line ([0031]).
It would have ben obvious to one of ordinary skill in the art at the time the invention was filed to include a pressure equalization line, as disclosed by Oehrlein, between the heating thermal fluid supply line and the heating fluid thermal fluid return line of Yukawa, because as taught by Oehrlein, this prevents unwanted pressure from building up in the supply line when all passages in the heating system are closed or at least heavily throttled ([0002]). Oehrlein further discloses that in the event of a build-up of heating fluids when all passages in the heating system are throttled, an internal circuit can quickly and reliably be established, which counteracts overheating of the heat generator ([0003]).
Relevant Prior Art
The following prior art references are made of record and considered pertinent to Applicant's disclosure, however, the references are not relied upon: Seon et al. (US 2014/0182649 A1), Pfeiffelmann et al. (“Water-Cooled Thermoelectric Generators for Improved Net Output Power”), and Alphabet Energy Inc. (CA 2963265 – see equivalent WO 2016/054333 A1). It is noted that Pfeiffelmann et al. and Alphabet Energy Inc. (CA 2963265) are cited on the 01/16/2025 IDS.
While the limitations “for receiving a heating thermal fluid” and “for receiving a coolant thermal fluid” in claim 1 do not require the respective plates to be capable of containing fluid, both Seon et al. and Pfeiffelmann et al. are considered pertinent to Applicant’s disclosure because both references disclose heat exchange plates containing thermal fluid (Seon – [0037] L1-3, [0039] L1-2; Pfeiffelmann – Fig. 4).
Alphabet Energy Inc. is considered pertinent to Applicant’s disclosure with regard to the disclosed fasteners which compress the first plurality of thermoelectric devices between the first cold-side plate and the first side of the hot-side heat exchanger and compress the second plurality of thermoelectric devices between the second cold-side plate and the second side of the hot-side heat exchanger (WO 2016/054333 A1 – [0008]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAMIR AYAD whose telephone number is (313) 446-6651. The examiner can normally be reached Monday - Friday, 8:30am - 5pm EST.
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/TAMIR AYAD/Primary Examiner, Art Unit 1726
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