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, claims 1-12, in the reply filed on 03/03/2026 is acknowledged.
Claims 13-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Objections
Claim 1 is objected to because of the following informalities: line 7 of claim 1 appears to be missing the verb “are” between the words “particles” and “embedded.” Appropriate correction is required.
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, 3-6, and 10-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KR 20180087056A, cited on 05/22/2025 IDS, hereinafter referred to as KR ‘056A, see attached machine translation.
Regarding claim 1, KR ‘056A discloses a thermoelectric conversion element ([0001]) comprising: a first metal layer ([0049] – multilayer thin film between the upper electrode and the thermoelectric semiconductor); a second metal layer ([0049] - multilayer thin film between the thermoelectric semiconductor and the lower electrode); and 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 ([0109]) and comprises a thermoelectric conversion material comprising Mg ([0005],[0131],[0139],[0159]), wherein ceramic particles are embedded within the thermoelectric conversion element (paragraphs [0042] and [0056] disclose oxides, nitrides, carbides, and borides).
Regarding claim 3, KR ‘056A discloses all the claim limitations as set forth above. KR ‘056A further discloses the first metal layer comprises an electrode layer comprising Cu ([0040]; it is noted that top layer of multilayer thin film between the upper electrode and the thermoelectric semiconductor satisfies the limitation requiring an electrode layer), 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 and comprises Mg and Cu ([0042]; it is noted that the layers of the disclosed multilayer thin film that are below the top layer of the multilayer thin film satisfy the limitation requiring an intermediate layer).
Regarding claim 4, KR ‘056A discloses all the claim limitations as set forth above. KR ‘056A further discloses the ceramic particles are embedded in an interior of the intermediate layer ([0042]; it is noted that the layers of the disclosed multilayer thin film that are below the top layer of the multilayer thin film satisfy the limitation requiring an intermediate layer).
Regarding claim 5, KR ‘056A discloses all the claim limitations as set forth above. KR ‘056A further discloses the ceramic particles comprise alumina ([0042]) discloses oxides containing aluminum).
Regarding claim 6, KR ‘056A discloses all the claim limitations as set forth above. KR ‘056A further discloses the ceramic particles comprise SiO2 ([0042] discloses oxides containing silicon).
Regarding claim 10, KR ‘056A discloses all the claim limitations as set forth above. KR ‘056A further discloses a thermoelectric conversion module (Figures 1 and 2) comprising a p-type thermoelectric conversion element ([0006]); an n-type thermoelectric conversion element ([0006]); and an electrode electrically connecting a first end portion of the p-type thermoelectric conversion element to a first end of the n-type thermoelectric conversion element ([0006]; Fig. 1), wherein the n-type thermoelectric conversion element is the thermoelectric conversion element ([0029]; it is noted that the description disclosed applies to both n-type and p-type thermoelectric elements).
Regarding claim 11, KR ‘056A discloses all the claim limitations as set forth above. KR ‘056A further discloses a thermoelectric conversion system comprising the thermoelectric conversion module ([0007], [0008], Figures 1 and 2); and a heat source disposed adjacent to the electrode ([0008]; it is noted that the limitation “disposed adjacent” does not require direct physical contact or the absence of intermediate components).
Regarding claim 12, KR ‘056A discloses all the claim limitations as set forth above. KR ‘056A further discloses a method for generating electrical power ([0008]), the method comprising generating electrical power by applying a temperature difference to the thermoelectric conversion module using heat from a heat source ([0008]).
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 2 is rejected under 35 U.S.C. 103 as being unpatentable over KR 20180087056A, cited on 05/22/2025 IDS, hereinafter referred to as KR ‘056A (see attached machine translation), as applied to claim 1 above, in view of Iida et al. (US 2012/0097205 A1).
Regarding claim 2, KR ‘056A discloses all the claim limitations as set forth above.
KR ‘056A does not explicitly disclose the thermoelectric conversion material comprises at least one selected from the group consisting of Sb and Bi.
Iida discloses a Mg-Si thermoelectric conversion material (abstract) and further discloses the thermoelectric conversion material comprises Sb as a dopant ([0101]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to include Sb as a dopant, as disclosed by Iida, in the Mg-Si thermoelectric conversion material of KR ‘056A, because as taught by Iida, the magnesium-silicon composite material according to the present invention will excel in durability at high temperatures when used as a thermoelectric conversion material, particularly in a case of containing Sb as the dopant ([0101]).
Claims 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over KR 20180087056A, cited on 05/22/2025 IDS, hereinafter referred to as KR ‘056A (see attached machine translation), as applied to claims 1 and 3 above.
Regarding claim 7, KR ‘056A discloses all the claim limitations as set forth
above.
KR ‘056A discloses the ceramic particles are nanoparticles ([0042]), and further discloses nanoparticle reinforcing materials are dispersed within a bonding material to improve mechanical properties such as tensile strength, yield strength, and toughness of the joint, and to provide excellent mechanical reliability and a long lifespan even when bonded at low temperatures ([0003]). KR ‘056A additionally discloses a relationship between particle radius and melting point (Fig. 11; [0115],[0117]).
KR ‘056A does not explicitly disclose 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.
As the manufacturing cost and efficiency of operation are variables that can be modified, among others, by adjusting said dimension of the ceramic particles, with said manufacturing cost and operation efficiency both increasing as the dimension of the ceramic particles is decreased, the precise dimension of the ceramic particles would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed dimension of the ceramic particles cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the dimension of the ceramic particles in the apparatus of KR ‘056A to obtain the desired balance between the manufacturing cost and the operation efficiency (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding claim 8, modified KR ‘056A discloses all the claim limitations as set forth above.
KR ‘056A discloses the ceramic particles are nanoparticles ([0042]), and further discloses nanoparticle reinforcing materials are dispersed within a bonding material to improve mechanical properties such as tensile strength, yield strength, and toughness of the joint, and to provide excellent mechanical reliability and a long lifespan even when bonded at low temperatures ([0003]). KR ‘056A additionally discloses a relationship between particle radius and melting point (Fig. 11; [0115],[0117]).
KR ‘056A does not explicitly disclose the ceramic particles in the cross section satisfy a second condition expressed as d ≤ 10 microns.
As the manufacturing cost and efficiency of operation are variables that can be modified, among others, by adjusting said dimension of the ceramic particles, with said manufacturing cost and operation efficiency both increasing as the dimension of the ceramic particles is decreased, the precise dimension of the ceramic particles would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed dimension of the ceramic particles cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the dimension of the ceramic particles in the apparatus of KR ‘056A to obtain the desired balance between the manufacturing cost and the operation efficiency (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding claim 9, KR ‘056A discloses all the claim limitations as set forth above. KR ‘056A further discloses the ceramic particles are disposed in the intermediate layer ([0042]; it is noted that the layers of the disclosed multilayer thin film that are below the top layer of the multilayer thin film satisfy the limitation requiring an intermediate layer).
While KR ‘056A does disclose a thickness of the thin films of the intermediate layer of less than 1 nm has the advantage of being able to bond at temperatures significantly lower than general conventional bonding temperature, but has the disadvantage that forming the thin films is difficult and manufacturing costs may increase significantly ([0099]), and further discloses if the thickness of a single layer of metal thin film exceeds 1 micron, the bonding temperature may increase ([0099]); KR ‘056A 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 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.
As the manufacturing cost and efficiency of operation are variables that can be modified, among others, by adjusting said thickness of the intermediate layer, with said manufacturing cost and operation efficiency both increasing as the thickness of the intermediate layer is decreased, the precise thickness of the intermediate layer would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed thickness of the intermediate layer cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the thickness of the intermediate layer in the apparatus of KR ‘056A to obtain the desired balance between the manufacturing cost and the operation efficiency (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Barton can be reached at (571) 272-1307. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at (866) 217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call (800) 786-9199 (IN USA OR CANADA) or (571) 272-1000.
/TAMIR AYAD/Primary Examiner, Art Unit 1726
Prosecution Insights