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 1-10, in the reply filed on 03/03/2026 is acknowledged.
Claim 11 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 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 6 and 7 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 6 recites “variations in an atomic concentration of oxygen atoms in the thickness direction of the first metal layer satisfy a first condition expressed as 0.5% ≤ α at a position corresponding to the first region” in lines two through 4 of the claim, however, the manner in which “variations in an atomic concentration” are required to satisfy the expressed condition is unclear. Specifically, while the atomic concentration of oxygen atoms does vary in the thickness direction of the first metal layer, it appears that it is the “maximum value to the concentration of oxygen atoms at a position corresponding to the first region” which is required to satisfy the claimed first condition, not “variations in an atomic concentration of oxygen atoms in the thickness direction of the first metal layer.” Claim 7 is rejected due to its dependence on claim 6, and is also rejected for the same reason with regard to the limitation “wherein the variations in the concentration satisfy a second condition of α ≤ 50%,” because it appears that it is the concentration which satisfies the recited second condition, not the variations in the concentration.
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 and 6-10 are rejected under 35 U.S.C. 103 as being unpatentable over Hayashi (US 2013/0213447 A1) in view of Fujiwara et al. (US 2014/0102500 A1).
Regarding claim 1, Hayashi discloses a thermoelectric conversion element (abstract) comprising: a first metal layer (LNe and Lae on left side in Fig. 4; [0054], [0058]); a second metal layer (LNe and Lae on right side in Fig. 4; [0054], [0058]); 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 (Pn(Pp) in Fig. 4; [0051]), wherein the first metal layer comprises a first region (Lo in Fig. 5A; [0088], [0089]) and a second region (region of Lae between Lo in Fig. 5A satisfies the limitation “a second region”), the first region being in a form of pieces (pieces in Lo in Fig. 5A) and comprising oxygen atoms ([0088], [0089]), the second region being different from the first region (the region of Lae between Lo in Fig. 5A in relation to Lo), and an atomic content of the oxygen atoms in the first region is higher than an atomic content of oxygen atoms in the second region of the first metal layer (oxygen concentration in Lo in relation to oxygen concentration in region of Lae between Lo in Fig. 5A; [0023], [0088], [0089]) and is higher than an atomic content of oxygen atoms in the thermoelectric conversion layer (oxygen concentration in Lo in relation to material disclosed for the thermoelectric conversion layer in [0035], [0036]).
While Hayashi does disclose the thermoelectric conversion layer comprising a thermoelectric conversion material comprising bismuth and tellurium ([0059]), Hayashi does not explicitly disclose the thermoelectric conversion layer comprising a thermoelectric conversion material containing Mg.
Fujiwara discloses a thermoelectric conversion element (abstract) and further discloses a thermoelectric conversion layer comprising a thermoelectric conversion material containing Mg ([0021]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the thermoelectric conversion layer of Hayashi with a magnesium-silicon thermoelectric conversion material, as disclosed by Fujiwara, instead of the bismuth-tellurium thermoelectric conversion material, because as evidenced by Fujiwara, the use of a magnesium-silicon thermoelectric conversion material instead of a bismuth-tellurium thermoelectric conversion material amounts to the use of a functionally equivalent material in place of another, and one skilled in the art would have a reasonable expectation of success when forming the thermoelectric conversion material of Hayashi with magnesium-silicon rather than bismuth-tellurium based on the teaching of Fujiwara ([0021]).
Regarding claim 6, modified Hayashi discloses all the claim limitations as set forth above. Modified Hayashi further discloses variations in an atomic concentration of oxygen atoms in the thickness direction of the first metal layer satisfy a first condition expressed at 0.5% ≤ α at a position corresponding to the first region (Hayashi - shown in annotated Fig. 5A below; maximum value of normalized oxygen peaks (corresponding to the concentration of oxygen atoms) at a position corresponding to the first region among the variations in the concentration in Fig. 5A), the variations in the concentration are obtained through a composition line analysis performed on a cross section of the first metal layer in the thickness direction of the first metal layer by Auger electron spectroscopy (Hayashi – [0088]), and in the first condition, α is a maximum value of the concentration of oxygen atoms among the variations in the concentration (Hayashi - shown in annotated Fig. 5A below; maximum value of normalized oxygen peaks (corresponding to the concentration of oxygen atoms) among the variations in the concentration in Fig. 5A is approximately 85).
Regarding claim 7, modified Hayashi discloses all the claim limitations as set forth above. Modified Hayashi further discloses the variations in the concentration satisfy a second condition of α ≤ 50% (Hayashi - shown in annotated Fig. 5A below; maximum value of normalized oxygen peaks (corresponding to the concentration of oxygen atoms) at a position corresponding to the first region, among the variations in the concentration in Fig. 5A).
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Regarding claim 8, modified Hayashi discloses all the claim limitations as set forth above. Modified Hayashi further discloses a thermoelectric conversion module (Hayashi – S130 in Fig. 3) comprising: a P-type thermoelectric conversion element (Hayashi – Pp in S130 in Fig. 3); an N-type thermoelectric conversion element (Hayashi – Pn in S130 in Fig. 3); 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 (Hayashi – E in relation to end portions of Pp and Pn in S130 in Fig. 3), wherein the N-type thermoelectric conversion element is the thermoelectric conversion element (Hayashi – Pn in Fig. 4; it is noted that the thermoelectric conversion element depicted in Fig. 4 is the Pn or Pp thermoelectric element as denoted by “Pn(Pp)”).
Regarding claim 9, modified Hayashi discloses all the claim limitations as set forth above. Modified Hayashi further discloses a thermoelectric conversion system (Hayashi – S145 in Fig. 3) comprising the thermoelectric conversion module (Hayashi – Pp and Pn connected by E in S130 in Fig. 3); and a heat source disposed adjacent to the electrode ([0052]).
Regarding claim 10, modified Hayashi discloses all the claim limitations as set forth above. Modified Hayashi further discloses a method for generating electrical power, the method comprising generating electrical power by creating a temperature difference in the thermoelectric conversion module using heat from a heat source (Hayashi – [0055], [0069]).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Hayashi (US 2013/0213447 A1) in view of Fujiwara et al. (US 2014/0102500 A1) as applied to claim 1 above, and further in view of Nakada (JP 2021150317 A - see equivalent US 2023/0097435).
Regarding claim 2, modified Hayashi discloses all the claim limitations as set
forth above.
Modified Hayashi does not explicitly disclose the thermoelectric conversion material further comprises at least one selected from the group consisting of Sb and Bi.
Nakada discloses a thermoelectric conversion element (abstract) and further discloses the thermoelectric conversion material comprises Bi ([0067]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to include Bi, as disclosed by Nakada, in the magnesium-silicon thermoelectric conversion material of modified Hayashi, because as evidenced by Nakada, the use of bismuth as a dopant in a magnesium-silicon thermoelectric conversion material 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 bismuth as a dopant in the magnesium-silicide thermoelectric conversion material of modified Hayashi based on the teaching of Nakada.
Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Hayashi (US 2013/0213447 A1) in view of Fujiwara et al. (US 2014/0102500 A1) as applied to claim 1 above, and further in view of Tohei et al. (WO 2017130461 A1 - see attached machine translation).
Regarding claim 3, modified Hayashi discloses all the claim limitations as set
forth above.
While modified Hayashi does disclose a joining layer (Hayashi - abstract), modified Hayashi does not explicitly disclose the first region comprises Mg.
Tohei discloses a thermoelectric conversion element (page 1 of machine translation) and further discloses a bonding material comprising Mg (second full paragraph on page 22).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the joining layer of modified Hayashi with a layer comprising magnesium, as disclosed by Tohei, because as evidenced by Tohei, the use of a layer comprising magnesium as a bonding layer in a thermoelectric conversion element amounts to the use of a known material in the art for its intended purpose to achieve an expected result, and one of ordinary skill in the art would have a reasonable expectation of success when forming the joining layer of modified Hayashi with a layer comprising magnesium based on the teaching of Tohei.
Regarding claim 4, modified Hayashi discloses all the claim limitations as set forth above.
While modified Hayashi does disclose the first metal layer further comprises a first electrode layer (Hayashi - E in Fig. 4; [0054]) and a first intermediate layer (Hayashi - Lae in Fig. 4; [0054]), the first electrode layer comprising Cu (Hayashi - [0047]), the first intermediate layer being disposed between the first electrode layer and the thermoelectric conversion layer in the thickness direction of the first metal layer (Hayashi – Lae in relation to E and Pn(Pp) in Fig. 4), and the first region is present between the first intermediate layer and the first electrode layer in the thickness direction of the first metal layer (Hayashi – Lo in relation to Lae and E in Figures 4 and 5A); modified Hayashi does not explicitly disclose the first intermediate layer comprises Mg and Cu.
Tohei discloses a thermoelectric conversion element (page 1 of machine translation) and further discloses a bonding material comprising Cu and Mg (second full paragraph on page 22).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the joining layer of modified Hayashi with a layer comprising copper and magnesium, as disclosed by Tohei, because as evidenced by Tohei, the use of a layer comprising an alloy of copper and magnesium as a bonding layer in a thermoelectric conversion element amounts to the use of a known material in the art for its intended purpose to achieve an expected result, and one of ordinary skill in the art would have a reasonable expectation of success when forming the joining layer of modified Hayashi with an alloy layer comprising copper and magnesium based on the teaching of Tohei.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Hayashi (US 2013/0213447 A1) in view of Fujiwara et al. (US 2014/0102500 A1) further in view of Tohei et al. (WO 2017130461 A1 - see attached machine translation) as applied to claim 4 above, and further in view of Ochi et al. (US 2014/0216515 A1).
Regarding claim 5, modified Hayashi discloses all the claim limitations as set
forth above.
While modified Hayashi does disclose the first metal layer further comprises a second intermediate layer (Hayashi - LNe depicted furthest left in Fig. 4) disposed between the first electrode layer and the first intermediate layer in the thickness direction of the first metal layer (Hayashi - LNe depicted furthest left in Fig. 4 in relation to E and Lae), and the first region is present between the first intermediate layer and the second intermediate layer in the thickness direction of the first metal layer (Hayashi- Lo in Fig. 5A in relation to portion of Lae to the right of leftmost Lo and portion of LNe to the left of leftmost Lo).
Modified Hayashi does not explicitly disclose the second intermediate layer comprises Mg and Cu.
Ochi discloses a thermoelectric conversion element (abstract) and further
discloses a diffusion prevention layer comprised of Mg and Cu ([0035] L14-15).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the diffusion prevention layer (second intermediate layer) of modified Hayashi (Hayashi - LNe depicted furthest left in Fig. 4) with a layer comprised of Mg and Cu, as disclosed by Ochi, because as evidenced by Ochi, the use of a diffusion prevention layer comprised of Mg and Cu amounts to the use of a known material/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 forming the diffusion prevention layer of modified Hayashi with a layer comprising Mg and Cu based on the teaching of Ochi.
Conclusion
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/TAMIR AYAD/Primary Examiner, Art Unit 1726