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 1-13, in the reply filed on 06/08/2026 is acknowledged.
Claims 14-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention(s), there being no allowable generic or linking claim.
Information Disclosure Statement
The information disclosure statement filed 07/16/2025 fails to comply with the provisions of 37 CFR 1.98(a)(4) because it lacks the appropriate size fee assertion. It has been placed in the application file, but the information referred to therein has not been considered as to the merits.
The information disclosure statement filed 07/16/2025 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
It is noted that with regard to the cited foreign patent document WO 2010033428, a copy of the foreign patent document has not been included in the application file.
It is further noted that with regard to the citation of WO 19970437790, the citation appears to be a duplicate of the citation of WO 9743790 in the IDS filed 07/16/2025.
Additionally, the following non patent literature documents cited in the IDS filed 07/16/2025 and included in the application file are not legible: “A liquid fuel pocket-sized thermoelectric generator for battery replacement”; “Why does the potential barrier of a diode decrease when it is forward biased?” and “Thermoelectric generator used as an energy store for grid leveling.”
Claim Objections
Claim 1 is objected to because of the following informalities: lines 15 and 16 of claim 1 appear to contain a typographical error with regard to the recitation “a higher concentration of the opposing surfaces.” It appears that the recitation should state a higher concentration at the opposing surfaces. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: line 16 of claim 1 appears to be missing the article “a” between the words “of” and “thickness.” Appropriate correction is required.
Claim 1 is objected to because of the following informalities: lines 16 and 17 of claim 1 appear to contain a typographical error with regard to the word “the” before the term “corresponding IDSS.” It appears that the recitation of lines 16 and 17 of claim 1 should state opposing surfaces of a corresponding IDSS than at a center of a thickness of the corresponding IDSS, in order to be consistent with the manner in which claim 7 refers to the limitation “corresponding” when referring to IDSS structures. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: line 18 of claim 1 appears to contain a typographical error with regard to the word “transfer.” It appears that the phrase should state the heat generation module transfers. Appropriate correction is required.
Claim 8 is objected to because of the following informalities: line 3 of claim 8 appears to be missing the word “to” between the words “configured” and “transfer.” Appropriate correction is required.
Claim 9 is objected to because of the following informalities: it appears that the phrase “a temperature of” is missing in line 2 of claim 9 between the words “between” and “less”; and also between the words “than” and “50°C”. Appropriate correction is required.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3, 5, and 7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-6, 8, 10, and 14-16 of U.S. Patent No. 12,041,852. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of U.S. Patent No. 12,041,852 recites a thermoelectric device comprising: a thermoelectric generator ring, wherein: the thermoelectric generator ring comprises a plurality of thermoelectric coupons forming a ring on a plane, and, each of the plurality of thermoelectric coupons comprises an n-type impurity diffused silicon semiconductor (IDSS) and a p-type IDSS, wherein each of the n-type IDSS and the p-type IDSS comprises: impurities diffused at opposing surfaces of a silicon semiconductor wafer at a predetermined concentration distribution, wherein the predetermined concentration distribution comprises a higher concentration of the impurities at the opposing surfaces of the corresponding IDSS than a concentration of the impurities in a center of a thickness of the corresponding IDSS; and, a forward bias voltage less than 20 mV, wherein: the ring is configured such that at least one of the opposing surfaces of the n-type IDSS and the p-type IDSS of each of the plurality of thermoelectric coupons are electrically coupled to corresponding surfaces of each adjacent thermoelectric coupon of the plurality of thermoelectric coupons such that, in a current generation mode, a differential temperature is applied by the differential temperature supply to the plurality of thermoelectric coupons in a forward direction such that current is generated.
Additionally, claim 10 of U.S. Patent No. 12,041,852 recites a thermoelectric
device comprising: a differential temperature supply and a thermoelectric generator ring, wherein: the thermoelectric generator ring comprises a plurality of thermoelectric coupons forming a ring on a plane, and, each of the plurality of thermoelectric coupons comprises a p-type impurity diffused silicon semiconductors (IDSS) and an n-type IDSS operably coupled in series forming the ring, wherein each of the p-type IDSS and the n-type IDSS comprises: impurities distributed at opposing surfaces of a silicon semiconductor wafer, wherein the impurities are distributed at a higher concentration at the opposing surfaces of the corresponding IDSS than at a center of a thickness of the corresponding IDSS; and, a forward bias voltage less than 20 mV, wherein, the ring is configured such that at least one of the opposing surfaces of the n-type IDSS and the p-type IDSS of each of the plurality of thermoelectric coupons are electrically coupled to corresponding surfaces of each adjacent thermoelectric coupon of the plurality of thermoelectric coupons such that, in a current generation mode, a differential temperature is applied by the differential temperature supply to the plurality of thermoelectric coupons in a forward direction such that a current is generated.
It is noted that with regard to the limitations “thermoelectric generator” and “heat generation,” the limitations are directed to the manner in which the apparatus is intended to be used, and recitations directed to the manner in which a claimed apparatus is intended to be used do 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.
For the reasons set forth above, claim 1 of the instant application is not patentably distinct from claims 1 and 10 of U.S. Patent No. 12,041,852.
With regard to claim 2 of the instant application, the recited “heat-insulated bauxite alumina units heated to provide a source of thermal energy” in claim 8 of U.S. Patent No. 12,041,852 satisfies the limitations “a heating element” (recited alumina units); “a plurality of heated substances coupled to the heating element and insulated by an insulation layer” (recited heat-insulated bauxite); “a heat transfer module configured to transfer thermal energy stored in the plurality of heated substances to the thermoelectric generator ring” (recited differential temperature supply to provide a source of thermal energy is necessarily comprised of a type of heat transfer module).
Regarding claim 3 of the instant application, the recited heat-insulated bauxite disclosed in claim 8 of U.S. Patent No. 12,041,852 satisfies the limitation.
Regarding claim 5 of the instant application, the limitations are directed to the manner in which the apparatus is intended to be used. As set forth above, recitations directed to the manner in which a claimed apparatus is intended to be used do 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.
It is noted that the claimed “thermal energy collector coupled to a solar energy source” and “excess energy collection module” are not part of the claimed thermoelectric generator or heating element.
Regarding claim 7 of the instant application, claims 4-6 and 14-16 of U.S. Patent No. 12,041,852 recite a hot and cold metal fin corresponding to each of the plurality of thermoelectric coupons, and it is noted that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 124 USPQ 378, 380 (CCPA 1960). Further, it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 12,041,852 in view of Burfitt et al. (US 2024/0426518). While claim 8 of U.S. Patent No. 12,041,852 does recite alumina units, claim 8 of U.S. Patent No. 12,041,852 does not recite the insulation layer comprises one or more vermiculite boards. Burfitt discloses a thermoelectric system ([0115]) and further discloses the use of either alumina or vermiculite as an insulation material ([0018]). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to use vermiculate, as disclosed by Burfitt, in place of the recited alumina, because as evidenced by Burfitt, the substitution amounts to the use of a functionally equivalent material known in the art in place of another.
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,041,852 in view of Brower et al. (US 8,132,616). Brower et al. discloses the conversion of thermal energy to electricity, and further discloses thermal input devices may include resistance heaters (C7/L48-64). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to use a resistance heater, as disclosed by Brower et al., as a thermal input in claim 1 of U.S. Patent No. 12,041,852, because as evidenced by Brower et al., the use of a resistance heater as a temperature supply source 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 using a resistance heater as a temperature supply source based on the teaching of Brower et al.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,041,852 in view of Schroeder (US 5,393,350). Schroeder discloses a thermoelectric generator ring comprising copper (C1/L45). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the thermoelectric generator ring of claim 1 of U.S. Patent No. 12,041,852 with copper, as disclosed by Schroeder, because as evidenced by Schroeder, the use of copper to form a thermoelectric generator ring 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 forming the thermoelectric generator ring recited in claim 1 of U.S. Patent No. 12,041,852 with copper based on the teaching of Schroeder.
Allowable Subject Matter
Claims 8-10 and 12-13 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. (It is noted that claims 8 and 9 contain additional objections as set forth above).
Conclusion
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/TAMIR AYAD/Primary Examiner, Art Unit 1726
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