Georgy Samsonidze et al.

Patent Trials and Appeals Board

Dec 20, 2019

14943069 - (D) (P.T.A.B. Dec. 20, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/943,069 11/17/2015 Georgy Samsonidze 1576-1826 9125
10800 7590 12/20/2019
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
EXAMINER
CHERN, CHRISTINA
ART UNIT PAPER NUMBER
1721
MAIL DATE DELIVERY MODE
12/20/2019 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GEORGY SAMSONIDZE and BORIS KOZINSKY

Appeal 2019-001943
Application 14/943,069
Technology Center 1700
____________

Before ROMULO H. DELMENDO, CHRISTOPHER L. OGDEN, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s final decision to reject claims 1, 2, 6, 7, 10–13, and 19–21.2
Claim 22 was also finally rejected (Final Act. 3), but was subsequently

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42—namely, Robert Bosch GmbH, which is also identified as
the real party in interest (Appeal Brief filed October 29, 2018 (“Appeal Br.”)
at 2). Also, according to the Specification (Specification filed November 17,
2015 (“Spec.”), ¶ 1), the “invention was made with government support
under DE-EE0004840 awarded by the Department of Energy - Office of
Energy Efficiency and Renewable Energy” and “[t]he government has
certain rights in the invention.”
2 See Appeal Br. 5–19; Reply Brief filed January 2, 2019 (“Reply Br.”) at
2–10; Final Office Action entered June 13, 2018 (“Final Act.”) at 3–15;
Examiner’s Answer entered November 23, 2018 (“Ans.”) at 3–14.
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canceled (Supplemental Advisory Action entered November 1, 2018
(entering an Amendment filed October 18, 2018)). We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.
I. BACKGROUND
The subject matter on appeal relates to a thermoelectric generator
including semiconductor legs formed of a specified alloy having a stable
half-Heusler structure and to a vehicle containing such a generator
(Specification filed (“Spec.”) ¶¶ 9, 14). According to the Inventors, a
vehicle exhaust having a thermoelectric generator operates under the
Seebeck principle to convert heat energy represented by a temperature
difference between exhaust gas on a hot side and coolant on a cold side into
electrical energy, which may then be used to power electrical components in
the vehicle, charge the vehicle’s battery, or power the vehicle’s drivetrain
(id. ¶ 6).
Representative claim 1 is reproduced from the Claims Appendix to the
Appeal Brief, as follows:
1. A thermoelectric generator comprising:
a hot side heat exchanger;
a cold side heat exchanger;
a plurality of n-type semiconductor legs arranged between
the hot side heat exchanger and the cold side heat exchanger; and
a plurality of p-type semiconductor legs arranged between
the hot side heat exchanger and the cold side heat exchanger and
alternating electrically in series with the plurality of n-type
semiconductor legs,
wherein at least one of the plurality of n-type
semiconductor legs and the plurality of p-type semiconductor
legs is formed of an alloy having a stable half-Heusler structure
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and comprising Si and Sn with molar fractions of x Sn and 1-x
Si, and x is less than 0.5.
(Appeal Br. 20 (emphasis added)). Claim 6, the only other independent
claim, is directed to a vehicle with an exhaust system including the same
thermoelectric generator specified in claim 1 (id. at 21).
II. REJECTIONS ON APPEAL
The claims on appeal stand rejected under 35 U.S.C. § 103, as
follows:
A. Claims 1, 2, 10–13, and 19 as unpatentable over Ono et al.3
(“Ono”) in view of Liu et al.4 (“Liu”);
B. Claims 6, 7, and 21 as unpatentable over Ono in view of Liu,
and further in view of Winckler;5 and
C. Claims 1, 10, 11, 19, and 20 as unpatentable over Liu in view of
Ono.
III. DISCUSSION
1. The Examiner’s Position
The Examiner finds that Ono describes a thermoelectric generator
having most of the limitations recited in claim 1, including an alloy having a
stable half-Heusler structure such as NbCoSn, wherein the Sn may be
partially replaced with Sb such that the molar fractions are x Sn and 1-x Sb,
wherein x is less than 0.5 (Final Act. 3). The Examiner acknowledges,
however, that Ono does not disclose the presence of Si in the structure such

3 US 2004/0261833 A1, published December 30, 2004.
4 US 2010/0163091 A1, published July 1, 2010.
5 US 3,020,325, issued February 6, 1962.
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that the molar fractions of Sn and Si are x Sn and 1-x Si, wherein x is less
than 0.5 (id. at 4). To resolve this difference, the Examiner relies on Liu
(id.). Specifically, the Examiner finds that Liu, which the Examiner
considers as analogous art to Ono, teaches a half-Heusler structure such as
TiNiSn in which Sn can be partially replaced with Si or Sb (id.). Based on
these findings, the Examiner concludes:
Since the prior art of Liu recognizes the equivalency of
substituting tin with either silicon or antimony in the field of half-
Heusler thermoelectric alloys, it would have been obvious to one
of ordinary skill in the art before the effective filing date of the
claimed invention to replace the antimony of Ono with the silicon
of Liu as it is merely the selection of a functionally equivalent
Group IV element recognized in the art and one of ordinary skill
in the art would have a reasonable expectation of success in
doing so.
(Id.).
2. The Appellant’s Contentions
The Appellant contends that the Examiner “has failed to clearly
articulate the reasons for obviousness, and has therefore not established a
prima facie case of obviousness” (Appeal Br. 5). Pointing out that, in claim
1, the molar fraction of Sn, relative to the molar fraction of Si, must be less
than 0.5—i.e., “x is less than 0.5”—the Appellant argues that “[n]one of the
prior art references teach or suggest a half-Heusler silicon-tin alloy that has
more silicon [Si] than tin [Sn]” (id. at 6). Specifically, the Appellant urges
that “Ono recognizes that doping the tin alloy with a small percentage of
antimony can improve the electrical conductivity of the resulting alloy,” as
disclosed in Ono’s working examples in which the Sb doping levels were
0%, 1%, or 2%, but Ono teaches away from replacing more than 50% of Sn
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with Sb by disclosing that replacing large quantities of Sn with Sb adversely
affects the alloy’s properties (id. at 8–10 (citing, e.g., Ono ¶¶ 34, 54–70)).
The Appellant further argues that the Examiner’s obviousness
rationale based on substituting a portion of Sn with either Si or Sb as
equivalent elements is flawed because Liu “merely indicating that silicon
and antimony are two elements that may be substituted for tin in Liu does
not establish that the properties of such a modification would be the same in
any alloy” such as that disclosed in Ono (Appeal Br. 11). The Appellant
points out that Sb (Group V) has one more valence electron than Sn (Group
IV), whereas Si (Group IV) has the same number of valence electrons as Sn
(id.). According to the Appellant, an obviousness rationale based on
substitution of one element for another is permissible only when the
substitution would be expected to provide a predictable result but “since the
results of modifying Ono to replace the antimony doping agent with silicon
would not have been predictable, Ono and Liu cannot be combined so as to
establish a prima facie case of obviousness with respect to claim 1” (id. at
12).
3. Opinion
We agree with the Appellant that the Examiner’s rejection fails to
articulate a sufficient reason to support a conclusion that a person having
ordinary skill in the art would have combined Ono and Liu in the manner as
recited in claim 1. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited in
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
Ono describes a thermoelectric conversion material that includes a
half-Heusler alloy represented by the formula QRL, wherein Q is at least one
element selected from group 5 elements V, Nb, and Ta, R is at least one
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element selected from Co, Rh, and Ir, and L is at least one element selected
from Sn and Ge (Ono ¶¶ 2, 32). Ono teaches that the alloy’s physical
properties may be controlled by substituting the atoms and slightly changing
the state in the vicinity of the Fermi level in order to increase the Seebeck
coefficient and reduce the electric resistivity (id. ¶ 33). Specifically, Ono
teaches that “when part of the element L is substituted by an element Z
(Z=Sb, In) and doped with a carrier, that is, when the foregoing formula is
QR(L1-pZp), where 0