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 without traverse of Group I, Species B, in the reply filed on 04/16/2026 is acknowledged.
Claims 11-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
It is noted that the restriction between Species A and Species B is hereby withdrawn due to the species being obvious variants based on the art of record as set forth below.
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 1-2 and 4-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Choi et al. (US 2010/0157306).
Regarding claim 1, Choi discloses a thermoplasmonic device for harvesting energy from incident light having at least one wavelength ([0005]), the device comprising: a thermoplasmonic layer configured to convert received light, by plasmonic resonance at said wavelength, to heat ([0065] discloses surface plasmon resonance); and a thermoelectric layer configured to generate electricity from the converted heat ([0065] discloses thermoelectric couplers), wherein the thermoplasmonic layer and the thermoelectric layer are directly thermally connected to transmit the converted heat from the thermoplasmonic layer to the thermoelectric layer ([0066]).
Regarding claim 2, Choi discloses all the claim limitations as set forth above. Choi further discloses the thermoelectric layer is comprised of thermoelectric legs (88a and 88b in Fig. 7), wherein each thermoelectric leg is parallel to each other (88a in relation to 88b in Fig. 7), wherein each thermoelectric leg (88a and 88b in Fig. 7; [0066]) is arranged between a hot region ([0066]; 73 in Fig. 7) where the thermoplasmonic layer is located ([0065],[0066]; Fig. 7; 88a and 88b in relation to 73) and a cold region where a cold source is located (region adjacent to 88a and 88b in Fig. 7 on side opposing 73).
Regarding claim 4, Choi discloses all the claim limitations as set forth above. Choi further discloses electrical contact arranged for conducting generated electricity from the thermoelectric layer (89 in Fig. 7; [0064]).
Regarding claim 5, Choi discloses all the claim limitations as set forth above.
While Choi does disclose a substrate for supporting the thermoplasmonic device ([0034],[0067]), it is noted that the substrate is not part of the claimed thermoplasmonic device and is therefore not positively recited. The limitation “a substrate for supporting the thermoplasmonic device” is directed to the manner in which the device 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 6, Choi discloses all the claim limitations as set forth above. Choi further discloses the thermoplasmonic layer and the thermoelectric layer are electrically isolated between themselves (layer between 73 and 88a,88b in Fig. 7).
Regarding claim 7, Choi discloses all the claim limitations as set forth above. Choi further discloses an insulator for electrically isolating the thermoplasmonic layer and the thermoelectric layer between themselves (layer between 73 and 88a,88b in Fig. 7).
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 3 and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Choi et al. (US 2010/0157306) as applied to claim 1 above.
Regarding claim 3, Choi discloses all the claim limitations as set forth above.
While Choi does disclose the thermoelectric layer is comprised of thermoelectric legs (88a and 88b in Fig. 7), wherein each thermoelectric leg (88a and 88b in Fig. 7; [0066]) is arranged between a hot region ([0066]; 73 in Fig. 7) where the thermoplasmonic layer is located ([0065],[0066]; Fig. 7; 88a and 88b in relation to 73) and a cold region where a cold source is located (region adjacent to 88a and 88b in Fig. 7 on side opposing 73); Choi does not explicitly disclose the thermoelectric legs are arranged radially.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to arrange the thermoelectric legs of Choi radially because such a modification would involve a mere change in configuration. It has been held that a change in configuration of shape of a device is obvious, absent persuasive evidence that a particular configuration is significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Regarding claim 8, Choi discloses all the claim limitations as set forth above. Choi further discloses the thermoplasmonic layer comprises resonant structures for plasmonic heating when exposed to light ([0036]).
While Choi does disclose the sensitive film may be patterned ([0036]), and further discloses the sensitive film 70 may be made of the same type of materials that are typically used in a conventional apparatus for detecting a surface plasmon resonance, for which a detailed description may not be necessary ([0036]); Choi does not explicitly disclose the resonant structures for plasmonic heating when exposed to light are periodic.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to pattern Choi’s resonant structures for plasmonic heating when exposed to light with a periodic structure because such a modification would involve a mere change in configuration. It has been held that a change in configuration of shape of a device is obvious, absent persuasive evidence that a particular configuration is significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Regarding claim 9, Choi discloses all the claim limitations as set forth above. Choi further discloses the thermoplasmonic layer comprises a plasmonic resonance material comprising an insulator structure ([0036] discloses a dielectric material; [0063]; [0036] discloses that sensitive film 70 may patterned; [0036] further discloses sensitive film 70 may have a nano-structure (e.g., nanotubes) or include a nano-material; [0036] discloses the sensitive film 70 may be made of the same type of materials that are typically used in a conventional apparatus for detecting a surface plasmon resonance, for which a detailed description may not be necessary) and topped by an electrically conducting coating ([0035] discloses metal layer 60).
While Choi does disclose the sensitive film may be patterned ([0036]), and further discloses the sensitive film 70 may be made of the same type of materials that are typically used in a conventional apparatus for detecting a surface plasmon resonance, for which a detailed description may not be necessary ([0036]); Choi does not explicitly disclose the resonant structures for plasmonic heating when exposed to light are periodic.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to pattern Choi’s resonant structures for plasmonic heating when exposed to light with a periodic structure because such a modification would involve a mere change in configuration. It has been held that a change in configuration of shape of a device is obvious, absent persuasive evidence that a particular configuration is significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
With regard to the limitation “wherein said periodic structure is defined by one of moulding, hot-melt, spin-coating, nanoimprint, laser printing and inkjet,” the limitation is directed to the manner in which the device is made, 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 10, Choi discloses all the claim limitations as set forth above. Choi further discloses a plasmonic resonance material comprising an insulator layer ([0036] discloses a dielectric material) coated with a conductive structure ([0035] discloses metal layer 60).
While Choi does disclose the sensitive film may be patterned ([0036]), and further discloses the sensitive film 70 may be made of the same type of materials that are typically used in a conventional apparatus for detecting a surface plasmon resonance, for which a detailed description may not be necessary ([0036]); Choi does not explicitly disclose the insulator layer of the plasmonic resonance material has a flat shape, or that the conductive structure of the plasmonic resonance material is periodic.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to pattern Choi’s plasmonic resonance material with a flat insulator layer because such a modification would involve a mere change in configuration. It has been held that a change in configuration of shape of a device is obvious, absent persuasive evidence that a particular configuration is significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Additionally, It would have been obvious to one of ordinary skill in the art at the time the invention was filed to pattern Choi’s plasmonic resonance material with a periodic conductive structure because such a modification would involve a mere change in configuration. It has been held that a change in configuration of shape of a device is obvious, absent persuasive evidence that a particular configuration is significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
With regard to the limitation “coated,” it is noted that the limitation is directed to the manner in which the device is made, and 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).
Conclusion
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/TAMIR AYAD/ Primary Examiner, Art Unit 1726
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