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 .
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 1, 2, 4, 5, 7-12, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Uehara et al. (US 2020/0006616 A1) in view of Hong et al. (KR 101892394 B1 – see attached machine translation).
Regarding claim 1, Uehara discloses a thermoelectric conversion element (abstract; 1 in Fig. 2) comprising: a first metal layer ([0090] L1-2, CuZn alloy layer on upper surface); a second metal layer ([0090] L1-2, CuZn alloy layer on lower surface); a thermoelectric conversion layer that is disposed between the first metal layer and the second metal layer in a thickness direction of the first metal layer and comprises a thermoelectric conversion material comprising Mg ([0087] L3); wherein the first metal layer includes an electrode layer comprising Cu ([0090] L1-2, CuZn alloy layer on upper surface), and an intermediate layer that is disposed between the electrode layer and the thermoelectric conversion layer in the thickness direction of the first metal layer (Fig. 5B, M1 to M2), the intermediate layer is a diffusion layer that contains Mg and Cu (Fig. 5B, M1 to M2), and the intermediate layer contains Mg diffused from the thermoelectric conversion layer Cu diffused from the electrode layer (Fig. 5B, M1 to M2).
While Uehara does disclose the upper and lower surfaces of the cylindrical sintered body were polished with a sand paper of #400 ([0089]), Uehara does not explicitly disclose ceramic particles embedded within the thermoelectric conversion element.
Hong discloses a thermoelectric conversion element ([0047]) and further discloses polishing the sintered metal with alumina powder ([0112]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to polish the sintered body of Uehara with alumina powder, as disclosed by Hong, because as evidenced by Hong, the use of alumina powder to polish sintered metal thermoelectric structures amounts to the use of a known 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 using alumina powder in the polishing process of Uehara based on the teaching of Hong.
With regard to the limitation “ceramic particles embedded within the thermoelectric conversion element,” the as-filed specification describes the use of alumina particles as an abrasive ([0089]), and a Cu electroplating process ([0090]). Modified Uehara discloses the use of alumina powder in a polishing process (Hong - [0112]), and a spark sintering process including the application of a pulse electric current and heat with the temperature rising 60 degrees C/minute until a temperature of 600 degrees is achieved, and maintained for 15 minutes (Uehara – [0092]).
Based on the similarity between the process disclosed in the as-filed specification and the process disclosed in modified Uehara, one skilled in the art would expect alumina particles embedded within the thermoelectric element. 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).
Regarding claim 2, modified Uehara discloses all the claim limitations as set forth above. Modified Uehara discloses the thermoelectric conversion material further comprises Sb (Uehara - Fig. 5B).
Regarding claim 4, modified Uehara discloses all the claim limitations as set forth above.
With regard to the limitation “the ceramic particles are embedded in at least one selected from the group consisting of the following (a), (b), and (c): (a) an interior of the electrode layer, (b) an interior of the intermediate layer, and (c) a boundary region between the electrode layer and the intermediate layer, the as-filed specification describes the use of alumina particles as an abrasive ([0089]), and a Cu electroplating process ([0090]). Modified Uehara discloses the use of alumina powder in a polishing process (Hong - [0112]), and a spark sintering process including the application of a pulse electric current and heat with the temperature rising 60 degrees C/minute until a temperature of 600 degrees is achieved, and maintained for 15 minutes (Uehara – [0092]).
Based on the similarity between the process disclosed in the as-filed specification and the process disclosed in modified Uehara, one skilled in the art would expect alumina particles embedded in at least one selected from the group consisting of the following (a), (b), and (c): (a) an interior of the electrode layer, (b) an interior of the intermediate layer, and (c) a boundary region between the electrode layer and the intermediate layer. 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).
Regarding claim 5, modified Uehara discloses all the claim limitations as set forth above. Modified Uehara further discloses the ceramic particles comprise alumina (Hong - [0112]).
Regarding claim 7, modified Uehara discloses all the claim limitations as set forth above.
While modified Uehara does not explicitly disclose wherein in an instance where a cross section of the first metal layer in the thickness direction thereof is observed by scanning electron microscopy-energy dispersive X-ray spectroscopy, the ceramic particles in the cross section satisfy a first condition expressed as 0.5 microns ≤ d, where d is a maximum dimension of the ceramic particles, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the ceramic particles of modified Uehara such that the ceramic particles in the cross section satisfy 0.5 microns ≤ d 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 8, modified Uehara discloses all the claim limitations as set forth above.
While modified Uehara does not explicitly disclose the ceramic particles in the cross section satisfy a second condition expressed as d ≤ 10 microns; it would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the ceramic particles of modified Uehara such that the ceramic particles in the cross section satisfy d ≤ 10 microns 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 9, modified Uehara discloses all the claim limitations as set forth above.
While modified Uehara does not explicitly disclose the first metal layer satisfies a condition expressed as 0.1 ≤ d/A ≤ 10, where d is a maximum dimension of the ceramic particles in a cross section of the first metal layer in the thickness direction thereof as observed by scanning electron microscopy-energy dispersive X-ray spectroscopy, and A is a thickness of the intermediate layer; it would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the ceramic particles of modified Uehara such that the ceramic particles in the cross section of the first metal layer in the thickness direction satisfy 0.1 ≤ d/A ≤ 10 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).
With regard to the limitation “the ceramic particles are disposed in the intermediate layer,” the as-filed specification describes the use of alumina particles as an abrasive ([0089]), and a Cu electroplating process ([0090]). Modified Uehara discloses the use of alumina powder in a polishing process (Hong - [0112]), and a spark sintering process including the application of a pulse electric current and heat with the temperature rising 60 degrees C/minute until a temperature of 600 degrees is achieved, and maintained for 15 minutes (Uehara – [0092]).
Based on the similarity between the process disclosed in the as-filed specification and the process disclosed in modified Uehara, one skilled in the art would expect alumina particles embedded in the intermediate layer. 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).
Regarding claim 10, modified Uehara discloses all the claim limitations as set forth above. Modified Uehara further discloses a thermoelectric conversion module (Uehara – Fig. 2) comprising: a P-type thermoelectric conversion element (Uehara - 21 in Fig. 2); an N-type thermoelectric conversion element (Uehara - 1 in Fig. 2); and an electrode electrically connecting a first end portion of the P-type thermoelectric conversion element to a first end portion of the N-type thermoelectric conversion element (Uehara - 13a in Fig. 2), wherein the N-type thermoelectric conversion element is the thermoelectric conversion element (Uehara - 1 in Fig. 2).
Regarding claim 11, modified Uehara discloses all the claim limitations as set forth above.
While modified Uehara does disclose a thermoelectric conversion system comprising the thermoelectric conversion module (Uehara – Fig. 2) and further discloses electric power can be generated on the basis of a temperature difference generated by inflow of thermal energy (Uehara – [0002]); modified Uehara does not explicitly disclose the thermoelectric conversion system comprising a heat source disposed adjacent to the electrode.
Hong discloses thermoelectric power generation which generates electricity from various heat sources such as waste heat from industries or automobiles, solar heat, geothermal heat, and body heat ([0002]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to dispose a heat source adjacent to the electrode of modified Uehara because as taught by Hong, the use of heat sources to generate electricity from a thermoelectric power generation device amounts to the use of a known component 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 disposing a heat source adjacent to the electrode of modified Uehara based on the teaching of Hong.
Regarding claim 12, modified Uehara discloses all the claim limitations as set forth above. Modified Uehara further discloses a method for generating electrical power (Uehara – [0002]), the method comprising generating electric power by applying a temperature difference to the thermoelectric conversion module by using heat from a heat source (Uehara – [0002]).
Regarding claim 16, modified Uehara discloses all the claim limitations as set forth above. Modified Uehara further discloses a thickness of the intermediate layer is not less than 3 microns and not more than 30 microns (Uehara – [0060]).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Uehara et al. (US 2020/0006616 A1) in view of Hong et al. (KR 101892394 B1 – see attached machine translation) as applied to claim 1 above, and further in view of Ueno (JP 2000077732 A).
Regarding claim 6, modified Uehara discloses all the claim limitations as set forth
above.
While modified Uehara does disclose polishing the sintered metal with alumina
powder (Hong – [0112]), modified Uehara does not explicitly disclose the ceramic particles comprise at least one selected from the group consisting of SiC and SiO2.
Ueno discloses a thermoelectric conversion element ([0005]) and further discloses surface finishing with abrasive material such as SiC ([0039]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to polish the sintered body of modified Uehara with an abrasive material such as SiC, as disclosed by Ueno, because as evidenced by Ueno, the use of an abrasive material such as SiC to polish sintered metal thermoelectric structures amounts to the use of a known 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 using an abrasive material such as SiC in the polishing process of modified Uehara based on the teaching of Ueno.
Response to Arguments
Applicant’s arguments with respect to claims 1-2, 4-12, and 16 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
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/TAMIR AYAD/ Primary Examiner, Art Unit 1726
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