Ex Parte Freedman

Patent Trial and Appeal Board

Jul 31, 2017

11931591 (P.T.A.B. Jul. 31, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
pdfx0028A 1385
EXAMINER
MEKHLIN, ELI S
ART UNIT PAPER NUMBER
1758
MAIL DATE DELIVERY MODE
11/931,591 06/09/2008
7590
Philip D. Freedman PC
1449 Drake Lane
Lancaster, PA 17601
Philip D. Freedman
07/31/2017 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 PHILIP D. FREEDMAN
Appeal 2014-006591
Application 11/931,591
Technology Center 1700
Before MICHAEL P. COLAIANNI, JAMES C. HOUSEL, and
JULIA HEANEY, Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellant submitted a timely request for rehearing dated June 6, 2017
(“Request”), requesting rehearing from and modification of the original
Decision in this Appeal, dated April 24, 2017 (“Decision”), in which this
panel affirmed the rejection of claims 60, 130-133, 135—139, and 141—150
of Application 11/931,591 as unpatentable under 35 U.S.C. § 103(a).
Because Appellant does not persuade us that we misapprehended or
overlooked any point of law or fact that would justify a different outcome,
we deny Appellant’s request to modify our Decision.
Appeal 2014-006591
Application 11/931,591
OPINION
A request for rehearing must state with particularity the points
believed to have been misapprehended or overlooked by the Board.
Arguments not raised in the briefs before the Board and evidence not
previously relied on in the briefs are not permitted in a request for rehearing
except as provided in 37 C.F.R. § 41.52(a)(2) through (a)(4). 37 C.F.R.
§ 41.52(a)(l)(2016).
In the Request, Appellant argues: (1) the Decision is based on a
mischaracterization of Pessel’s teaching and a misunderstanding of the
technology at issue (Request 3 4); (2) rejections based on Dean, Freeman
and Pessel should be reconsidered because those references are non-
analogous and the Decision misapprehends the responsibility of examination
to make a finding that the applied references are analogous (Request 4); (3)
rejections of claims 136 and 150 should be reconsidered because the
Examiner did not establish prima facie obviousness and the Decision
misapprehends the initial burden of prima facie examination (Request 6);
and (4) the Decision misapprehends 37 C.F.R. 1.131 and Appellant’s
Declaration asserting priority of invention over Zhang.
Appellant’s arguments essentially are the same as those that Appellant
presented in the Appeal Brief and Reply Brief (the “Briefs”). We do not
find these repeated arguments persuasive for the reasons presented in the
Decision. Particularly with regard to arguments (3) and (4) above, the
Request merely restates, verbatim, corresponding portions of argument from
the Briefs. For this reason, we need not further consider those arguments.
With regard to argument (1) above, although the Request does not
merely restate portions of the Briefs, it does repeat the same points from the
Briefs, i.e., that Pessel discloses “separate and distinct cooling and current
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Appeal 2014-006591
Application 11/931,591
generating Peltier and Seebeck structures” where “one is the opposite
configuration to the other; the one inputs current to cool; the other generates
current from heat.” Request 3. As in the Briefs, it appears that Appellant is
arguing that the structural difference between Peltier and Seebeck structures
is whether the circuit is configured with a load or with a source of electric
energy. See App. Br. 13 (showing identical thermoelectric structures, where
one is connected to a load in circuit and the other to a source in circuit).
That difference in the type of circuit is undisputed. Ans. 31. The Examiner
relies on Pessel, however, as teaching that the same thermoelectric device,
corresponding to the thin film interconnect recited in Appellant’s claims, can
be used in a Peltier or Seebeck circuit. Ans. 6—7, citing Pessel 1:32—35 and
64—68. As the Examiner explains, Pessel makes clear that the same
thermoelectric device is used in either circuit. Id. Appellant does not
provide further explanation relating to those portions of Pessel, to persuade
us that the Examiner’s finding concerning Pessel is reversible error.1
With regard to argument (2) above, Appellant appears to argue that
Dean and Freeman are not analogous because they are cooling structures and
therefore not reasonably pertinent to current generating structures. Request
5. Appellant’s argument is not persuasive because, as explained in the
1 We note Appellant’s argument that the Decision incorrectly used the term
“thermoelectric cooler (“TEC”) element” to describe Pessel’s thermoelectric
device (Request 3—4, citing Decision 5) and acknowledge that Pessel itself
uses the term “thermoelectric device.” It is clear from the Examiner’s
explanation of the rejection, however, that the Examiner is relying on
Pessel’s thermoelectric device (Pessel 1:32—35 and 64—68) as corresponding
to the thin film interconnect recited in Appellant’s claims. E.g. Ans. 6—7,
31. Thus, Appellant does not persuade us that we have misapprehended
facts concerning the technology at issue.
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Appeal 2014-006591
Application 11/931,591
Decision, the Examiner’s finding that Dean and Freeman are analogous is
based on each being from the same field of endeavor (i.e., they satisfy the
first test of analogous prior art under In re Bigio, 381 F.3d 1320, 1325 (Fed.
Cir. 2004)). Decision 6—7, citing Ans. 34—36. The Examiner correctly
applied the law regarding analogous art and made findings amply supported
by the record. Thus, we did not misapprehend or overlook the responsibility
of examination concerning a finding of analogous art.
DECISION
The Appellant’s Request for Rehearing has been granted to the extent
that the Decision has been reconsidered in light of Appellant’s arguments.
However, the Request is denied with respect to making changes to the final
disposition of the rejections therein.
This Decision on the Request for Rehearing incorporates our
Decision, mailed April 24, 2017, and is final for the purposes of judicial
review. See 37 C.F.R. § 41.52(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
REHEARING DENIED
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