Ex Parte Micallef

Board of Patent Appeals and Interferences

May 30, 2012

11469885 (B.P.A.I. May. 30, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/469,885 09/04/2006 Joseph A. Micallef 7159
65231 7590 05/30/2012
JOSEPH MICALLEF
5512 MONTGOMERY STREET
CHEVY CHASE, MD 20815
EXAMINER
TRINH, THANH TRUC
ART UNIT PAPER NUMBER
1725
MAIL DATE DELIVERY MODE
05/30/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOSEPH A. MICALLEF
____________

Appeal 2011-002129
Application 11/469,885
Technology Center 1700
____________

Before CHUNG K. PAK, PETER F. KRATZ and
JEFFREY T. SMITH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-002129
Application 11/469,885

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1 through 20. We have jurisdiction under 35 U.S.C. § 6.
Appellant’s claimed invention relates to a solar cell apparatus and
method of making it. App. Br. 3-4. Claim 1 is illustrative:
1. A solar cell apparatus, comprising:
a photovoltaic cell having a first region above a second
region;
a first conductor formed of a first thermoelectric material
and coupled to said first region, said first thermoelectric
material having a thermoelectric coefficient of a first polarity;
and
a second conductor formed of a second thermoelectric
material and coupled to said second region, said second
thermoelectric material having a thermoelectric coefficient of a
second polarity.
The Examiner relied on the following references in rejecting the
appealed subject matter:

Reich US 3,564,860 February 23, 1971
Ellion US 4,710,588 December 1, 1987
Parise US 5,936,193 August 10, 1999

Appellant requests review of the following rejections (App. Br. 5)
from the Examiner’s final office action:
I. Claims 1, 5, 8-11 and 15-16 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Ellion.
II. Claims 2, 6-7 and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ellion and Parise.
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III. Claims 3 and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ellion and Reich.
IV. Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ellion.
V. Claims 18-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ellion and Parise.
VI. Claims 4 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ellion, Parise and Reich.1

OPINION2
Rejections of Independent Claims 1, 11 and 17 over Ellion
(Rejections I and IV)

The dispositive issue for this appeal is: Did the Examiner err in
determining that Ellion describes a solar cell apparatus comprising a first
conductor formed of a first thermoelectric material having a thermoelectric
coefficient of a first polarity and a second conductor formed of a second
thermoelectric material having a thermoelectric coefficient of a second

1 The Examiner entered this rejection as a new ground of rejection in the
Answer mailed September 13, 2010 (Ans. 3) in response to Appellant’s
argument on page 9 of the Appeal Brief entered August 1, 2010. Appellant
addressed the new ground of rejection in the Reply Brief entered October 24,
2010 (Reply Br. 10-11).
2 A discussion of the Parise and Reich references is unnecessary for
disposition of the present appeal. The Examiner relied upon these references
to describe features of the dependent claims not related to the dispositive
issue.
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Application 11/469,885

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polarity as required by the subject matter of independent claims 1, 11 and
17? 3
We answer this question in the affirmative and REVERSE.
With respect to the anticipation rejection of claims 1 and 11, the
Examiner bears the initial burden of establishing a prima facie case of
anticipation. In re King, 801 F.2d 1324, 1326-27 (Fed. Cir. 1986).
Anticipation under 35 U.S.C. § 102 requires that “each and every element as
set forth in the claim is found, either expressly or inherently described, in a
single prior art reference.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir.
1999).
Likewise, with respect to the obviousness rejection of claim 17,
during examination, the Examiner bears the initial burden of establishing a
prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992). “[R]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
The Examiner found that Ellion teaches a solar cell apparatus
comprising a photovoltaic cell (18/20), a first conductor (24) formed of a
first thermoelectric material (lead telluride) and a second conductor (26)
formed of a second thermoelectric material (lead telluride). Ans. 4-5. The
Examiner also found that the first and second thermoelectric materials each
have a respective thermoelectric coefficient of a first and second polarity.

3 We will limit our discussion to independent claim 1. The dispositive issue
is equally applicable to independent method claim 17.
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Id. The Examiner concluded that Ellion anticipated the claimed subject
matter of independent claim 1.
Claims are given their broadest reasonable interpretation in light of
the specification as they would be interpreted by one of ordinary skill in the
art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004). According to page 4 of the instant Specification:
A first material having a negative Seebeck
coefficient is used to form a conductor to the n-
type region of the cell and a second material
having a positive Seebeck coefficient is used to
form a conductor to the p-type region of the cell.

Appellant argued that Ellion does not disclose or suggest the use of
two different thermoelectric materials having thermoelectric coefficient with
different polarities. App. Br. 7. As correctly noted by Appellant, the
disclosure of Ellion relied on by the Examiner to meet the claimed first and
second thermoelectric materials which describes the same material (lead
tellurium) for both. Id. at 6. We agree with Appellant that there is no
description in Ellion of using different thermoelectric materials having
thermoelectric coefficients of different polarities as required by the claimed
invention. While the Examiner reasons that the anode and cathode of
Ellion’s combined photovoltaic cell function as the polarity for the
thermoelectric effect (Ans. 15), the Examiner has not pointed to any
disclosure in Ellion to support the contention that it is the thermoelectric
material that has the thermoelectric coefficient of the specified polarity. We
agree with Appellant that the language of the claims is directed to the
polarity of the thermoelectric coefficients associated with the different
materials used for the conductors and not to the polarity of the conductors as
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the Examiner contends. App. Br. 8. The Examiner also has not identified a
portion of Ellion that would have rendered obvious utilizing two different
thermoelectric materials having thermoelectric coefficient with the specified
polarity as required by the claimed invention.
Under these circumstances, we cannot conclude that the Examiner has
met the minimum threshold of establishing anticipation under 35 U.S.C.
§ 102(b). Accordingly, the rejection of claims 1, 5, 8-11 and 15-16 under
35 U.S.C. § 102(b) as anticipated by Ellion is reversed. We also reverse the
rejection of claim 17 under 35 U.S.C. § 103(a) as unpatentable over Ellion
for the same reasons.
We note that the Examiner rejected dependent claims 2-4, 6-7, 12-14
and 18-20 under 35 U.S.C. § 103(a) as unpatentable over Ellion in further
view of Parise and/or Reich (Rejections II, III, V and VI). The Examiner
relied on the additional references to meet respective limitations of these
dependent claims. Ans. 5-8, 10-12. These references do not overcome the
deficiencies of Ellion discussed above. Accordingly we cannot sustain these
rejections under 35 U.S.C. § 103(a) for the reasons given above.

ORDER
The rejection of claims 1, 5, 8-11 and 15-16 under 35 U.S.C. § 102(b)
as anticipated by Ellion is reversed.
The rejection of claims 2, 6-7 and 12 under 35 U.S.C. § 103(a) as
unpatentable over Ellion and Parise is reversed.
The rejection of claims 3 and 13 under 35 U.S.C. § 103(a) as
unpatentable over Ellion and Reich is reversed.
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The rejection of claim 17 under 35 U.S.C. § 103(a) as unpatentable
over Ellion is reversed.
The rejection of claims 18-20 under 35 U.S.C. § 103(a) as
unpatentable over Ellion and Parise is reversed.
The rejection of claims 4 and 14 under 35 U.S.C. § 103(a) as
unpatentable over Ellion, Parise and Reich is reversed.

REVERSED
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