DETAILED ACTION
Examiner’s Notes
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Remarks
Claims 1, 6, and 9-10 are amended.
Claims 3 are cancelled.
Claims 7-8 are withdrawn from further consideration.
Claims 1-2 and 4-10 are pending.
Claim Rejections - 35 USC § 103
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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, and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over UEHARA (US 20200006616 A1) in view of KORCHAGIN (Contacts to Thermoelectric Materials Obtained by Chemical and Electrochemical Deposition of Ni and Co).
Regarding claim 1, UEHARA teaches a thermoelectric conversion element (see the n-type thermoelectric conversion element 1 in the thermoelectric conversion module 11; see Fig. 2) comprising:
a thermoelectric conversion layer (see the thermoelectric conversion layer 2) that comprises a thermoelectric conversion material comprising Mg and at least one selected from the group consisting of Sb and Bi ([Abstract] The thermoelectric conversion layer is composed of a thermoelectric conversion material containing Mg. The thermoelectric conversion material contains at least one kind of element selected from the group consisting of Sb and Bi); and
a metal layer (see the first intermediate layer 3a; [0058] The first intermediate layer 3a contain, for example, Cu, Zn, and Mg), wherein the thermoelectric conversion layer comprises a first surface that is in contact with the metal layer (see the top surface of the thermoelectric conversion layer 2 that is in contact with the first intermediate layer 3a).
Regarding the claimed “an arithmetic mean roughness Ra of the first surface in a cross section of the thermoelectric conversion layer and the metal layer along a thickness direction of the metal layer satisfies a first condition expressed as 0.22 pm < Ra < 4.2 pm, and the arithmetic mean roughness Ra is determined based on an image obtained by energy dispersive X-ray spectroscopy”, UEHARA teaches an arithmetic mean roughness Ra of the first surface in the cross section of the thermoelectric conversion layer and the metal layer along a thickness direction of the metal layer (Fig. 7A of UEHARA shows the SEM image of the cross section of the thermoelectric conversion element having an arithmetic mean roughness) and the arithmetic mean roughness Ra is determined based on an image obtained by energy dispersive X-ray spectroscopy ([0094] A state of a part which was in a cross section of the formed thermoelectric conversion element and was located near an interface between the sintered body and the CuZn alloy layer was evaluated with the SEM. In addition, the composition of the part located near an interface between the sintered body and the CuZn alloy layer was evaluated by linear analysis of the above-mentioned cross section using the EDX), but does not explicitly disclose the claimed “0.22 µm ≤ Ra ≤ 4.2 µm”. However, KORCHAGIN discloses a study of metal layer contacts to thermoelectric materials, wherein on the one hand, the surface roughness of the TE material increases the contact area between the contact layer and the TE material, which should increase the adhesion strength; on the other hand, high roughness leads to the deformation of the deposited contact layer and, as a result, to a decrease in adhesion and an increase in contact resistance (see Introduction). As the adhesion strength and the contact resistance are variables that can be modified by adjusting said arithmetic mean roughness, the precise arithmetic mean roughness would have been considered a result effective variable by one having ordinary skill in the art. As such, without showing unexpected results, the claimed arithmetic mean roughness cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have optimized, by routine experimentation, the arithmetic mean roughness in the apparatus of UEHARA to obtain the desired balance between the adhesion strength and the contact resistance (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 2, Applicant is directed above for a full discussion as applied to claim 1.
UEHARA teaches the metal layer comprises Cu ([0058] The first intermediate layer 3a contain, for example, Cu).
Regarding claim 4, Applicant is directed above for a full discussion as applied to claim 1.
UEHARA teaches a thermoelectric conversion module (see the thermoelectric conversion module in Fig. 2) comprising: a P-type thermoelectric conversion element (see the p-type thermoelectric conversion element 21); an N-type thermoelectric conversion element (see the n-type thermoelectric conversion element 1); 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 (see the first external electrode 13a electrically connecting the top portion of the p-type thermoelectric conversion element 21 to the top portion of the n-type thermoelectric conversion element 1), wherein the N-type thermoelectric conversion element is the thermoelectric conversion element according to claim 1 (see the rejection of claim 1) (see Fig. 2).
Regarding claim 9, Applicant is directed above for a full discussion as applied to claim 1.
UEHARA teaches the metal layer comprises a metal containing portion (see the whole portion of the first intermediate layer 3a containing a metal (see Cu, Zn, Mg)) located at a boundary between the metal layer and the thermoelectric conversion layer (see Fig. 2 of UEHARA) ([0058] The first intermediate layer 3 a and the second intermediate layer 3 b contain, for example, Cu, Zn, and Mg. In this case, the content of Cu is, for example, not less than 50 weight percent and not more than 70 weight percent. The content of Zn is, for example, not less than 25 weight percent and not more than 35 weight percent. The content of Mg is, for example, not less than 0.1 weight percent and not more than 25 weight percent.), and the first surface is a surface at which the thermoelectric conversion layer is in contact with the metal containing portion (The top surface of the thermoelectric conversion layer 2 is a surface at which the thermoelectric conversion layer 2 is in contact with the whole portion of the first intermediate layer 3a) (see the rejection of claim 1 and Fig. 2 of UEHARA).
Regarding claim 10, Applicant is directed above for a full discussion as applied to claim 9.
UEHARA teaches the metal containing portion comprises an alloy comprising Cu and Mg ([0058] The first intermediate layer 3 a and the second intermediate layer 3 b contain, for example, Cu, Zn, and Mg. In this case, the content of Cu is, for example, not less than 50 weight percent and not more than 70 weight percent. The content of Zn is, for example, not less than 25 weight percent and not more than 35 weight percent. The content of Mg is, for example, not less than 0.1 weight percent and not more than 25 weight percent.; The whole portion of the first intermediate layer 3a comprises an alloy comprising Cu, Zn, and Mg).
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over SHAHADALSUDAIS (Thermoelectric Devices: What They Are & Examples) in view of UEHARA (US 20200006616 A1) and KORCHAGIN (Contacts to Thermoelectric Materials Obtained by Chemical and Electrochemical Deposition of Ni and Co).
Regarding claim 5, SHAHADALSUDAIS teaches a thermoelectric conversion system (see the thermoelectric generator in P1) comprising a heat source disposed adjacent to the electrode (see the heat source disposed adjacent to the top electrode) (see the Figure in P1). Regarding the claimed “the thermoelectric conversion module according to claim 4”, SHAHADALSUDAIS teaches the thermoelectric conversion module (see the thermoelectric conversion module between the heat source and the cool side) (see the Figure in P1), but does not explicitly disclose the claimed “the thermoelectric conversion module according to claim 4”. However, UEHARA in view of KORCHAGIN teaches the thermoelectric conversion module according to claim 4 (see the full rejections of claim 4 and claim 1). It would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to employ the thermoelectric conversion module as described in UEHARA in view of KORCHAGIN (see the full rejections of claim 4 and claim 1) for the thermoelectric conversion module in the device of SHAHADALSUDAIS, because the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination (MPEP 2144).
Regarding claim 6, SHAHADALSUDAIS teaches a method for generating electrical power (see the method for generating electrical power in P1), the method comprising generating electrical power by creating a temperature difference in the thermoelectric conversion module (see the thermoelectric conversion module between the heat source and the cool side) by using heat from the heat source (see the heat source) (see the Figure in P1) (P1: A thermoelectric device creates voltage when there is a different temperature on each side; In this setup, there is a heat source on one side, and the other side is cool (see figure). If a heat source is provided, it causes the movement of power current through the circuit. Hot carriers diffuse the hot end to the cool end and vice versa. Adding the heat source and allowing for this movement to begin causes the generation of electricity). Regarding the claimed “the thermoelectric conversion module according to claim 4”, UEHARA in view of KORCHAGIN teaches the thermoelectric conversion module according to claim 4 (see the full rejections of claims 4-5 and claim 1). It would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to employ the thermoelectric conversion module as described in UEHARA in view of KORCHAGIN (see the full rejections of claims 4-5 and claim 1) for the thermoelectric conversion module in the device of SHAHADALSUDAIS, because the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination (MPEP 2144).
Response to Arguments
Applicant's arguments filed on 07/22/2026 have been fully considered, but they are not persuasive.
Regarding claim 1, Applicant’s argument regarding that the prior art does not teach or suggest the new limitation “the arithmetic mean roughness Ra is determined based on an image obtained by energy dispersive X-ray spectroscopy” in the amended claim 1, is not persuasive.
UEHARA teaches the arithmetic mean roughness Ra is determined based on an image obtained by energy dispersive X-ray spectroscopy ([0094] A state of a part which was in a cross section of the formed thermoelectric conversion element and was located near an interface between the sintered body and the CuZn alloy layer was evaluated with the SEM. In addition, the composition of the part located near an interface between the sintered body and the CuZn alloy layer was evaluated by linear analysis of the above-mentioned cross section using the EDX).
Regarding the claim 1, Applicant’s argument regarding that the prior art does not teach or suggest the new limitation “0.22 µm ≤ Ra ≤ 4.2 µm” in the amended claim 1, is not persuasive.
Regarding the new limitation “0.22 µm ≤ Ra ≤ 4.2 µm”, UEHARA in view of KORCHAGIN discloses a study of metal layer contacts to thermoelectric materials, wherein on the one hand, the surface roughness of the TE material increases the contact area between the contact layer and the TE material, which should increase the adhesion strength; on the other hand, high roughness leads to the deformation of the deposited contact layer and, as a result, to a decrease in adhesion and an increase in contact resistance (see Introduction of KORCHAGIN). As the adhesion strength and the contact resistance are variables that can be modified by adjusting said arithmetic mean roughness, the precise arithmetic mean roughness would have been considered a result effective variable by one having ordinary skill in the art. As such, without showing unexpected results, the claimed arithmetic mean roughness cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have optimized, by routine experimentation, the arithmetic mean roughness in the apparatus of UEHARA to obtain the desired balance between the adhesion strength and the contact resistance (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
Applicant's amendment necessitated the modified and/or 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).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAE-SIK KANG whose telephone number is 571-272-3190. The examiner can normally be reached on 9:00am – 5:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew T. Martin can be reached on 571-270-7871. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TAE-SIK KANG/
Primary Examiner, Art Unit 1728
Prosecution Insights