Ex Parte Tajima

Patent Trial and Appeal Board

Jul 16, 2018

13580559 (P.T.A.B. Jul. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/580,559 10/02/2012
3624 7590 07/18/2018
VOLPE AND KOENIG, P.C.
UNITED PLAZA
30 SOUTH 17TH STREET, 18th Floor
PHILADELPHIA, PA 19103
FIRST NAMED INVENTOR
Kenichi Tajima
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
SAIKYO-PT012 4731
EXAMINER
TRAN,UYENM
ART UNIT PAPER NUMBER
1726
NOTIFICATION DATE DELIVERY MODE
07/18/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
eoffice@volpe-koenig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENICHI TAJIMA
Appeal2017-009462
Application 13/580,559
Technology Center 1757
Before BRADLEY GARRIS, KAREN M. HASTINGS, and
LILIAN REN, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134 from the Examiner's
rejections of claims 1, 4, 6-8 and 11-16. We have jurisdiction over the
appeal pursuant to 35 U.S.C. § 6(b ).
We AFFIRM.
Claim 1 is representative of the claimed invention (emphasis added to
highlight key disputed limitations):
Claim 1. A thermoelectric module, comprising:
a thermoelectric element comprising:
a thermoelectric main body;
1 The Real Party in Interest is stated to be "Kyocera Corporation" (App. Br.
3).
Appeal2017-009462
Application 13/580,559
an insulating layer disposed on a periphery of the
thermoelectric main body; and
a metal layer comprising:
a first portion extending along the thermoelectric main body
end and the insulating layer end; and
a second portion non-parallel to the first portion and extending
a metal layer height from the first portion along a periphery of the
insulating layer; and
a wiring conductor connected to the thermoelectric element;
and an electrically conductive bonding material bonded directly to the
second portion of the metal layer and the wiring conductor.
(Appeal Br., Claims Appendix, 12.)
Independent claims 14 and 16 are likewise directed to a thermoelectric
module similar to claim 1, with additional limitations ( Claims Appendix).
The rejections2 maintained on appeal are all under 35 U.S.C. § I03(a):
a) claim 16 as unpatentable based on the combined prior art Iwanade
et al., (U.S. Pub. No. 2007/0044828 Al, published Mar. 1, 2007; hereinafter
"Iwanade"), Kobayashi et al., (JP20010074I 1 (A), published Jan. 12, 2001;
hereinafter "Kobayashi"), and Yoo (U.S. Pat. No. 6,271,459 Bl, issued Aug.
7, 2001);
b) claims 1, 4, 6, 7, and 11-15 as unpatentable based on the
combined prior art of Iwanade, Kobayashi and Saita et al., (U.S. Pub. No.
2009/0032081 Al, published Feb. 5, 2009; hereinafter "Saita"); and
2 We herein refer to the Final Office Action, mailed Jul. 1, 2016 ("Final
Action"); Appeal Brief, filed Dec. 27, 2016 ("Appeal Br."); Examiner's
Answer, mailed Apr. 28, 2017 ("Ans."); and the Reply Brief, filed Jun. 28,
2017 ("Reply Br.").
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Application 13/580,559
c) claim 8 as unpatentable over the applied prior art of of I wanade,
Kobayashi, Yoo, and Shutoh et al., (U.S. 2002/0179135 Al; published Dec.
5, 2002; hereinafter "Shutoh").
ANALYSIS
We have reviewed each of Appellant's arguments for patentability.
Having done so, we determine that a preponderance of the evidence supports
the Examiner's determination that the claimed subject matter of independent
claims 1, 14 and 16 are unpatentable within the meaning of§ 103. Thus, we
sustain the Examiner's rejection for essentially those reasons expressed in
the Final Action and Answer, including the Examiner's Response to
Argument section, and we add the following primarily for emphasis.
Appellant does not dispute most of the Examiner's factual findings
with respect to the applied references. Rather, Appellant's main argument
with respect to independent claims 1, 14 and 16 is that neither I wanade nor
Saita "Teach, Disclose, or Suggest the Metal Layer of Claims 1, 14, and 16"
(Appeal Br. 8, 10; bolding omitted). Notably, Saita was not relied upon to
teach this metal layer, and furthermore Saita was not relied upon at all in the
rejection of claim 16.
Specifically, Appellant states that the metal plate of I wanade "is not
bonded or adhered to the thermoelectric elements" (Appeal Br. 8). While
claim 16 requires the second portion of the metal layer is "bonded to an
entire perimeter of an end portion of the insulating layer" (Reply Br. 6),
none of the claims require that the metal plate is "bonded or adhered to the
thermoelectric elements" per se, as pointed out by the Examiner (Ans. 14).
The plain language of claims 1 and 14 does not even require that any part of
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Application 13/580,559
that metal layer is bonded to the insulating layer. Limitations not appearing
in the claims cannot be relied upon for patentability. In re Self, 671 F .2d
1344, 1348 (CCPA 1982).
"[T]he PTO must give claims their broadest reasonable construction
consistent with the specification . . . . Therefore, we look to the specification
to see if it provides a definition for claim terms, but otherwise apply a broad
interpretation." In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007). "[A]s applicants may amend claims to narrow their scope,
a broad construction during prosecution creates no unfairness to the
applicant or patentee." Id
As set out by the Examiner, the applied prior art does reasonably
encompass the claim language (Final Action generally). The Examiner
explains in the rejection of claim 16 that the use of an insulating layer as
exemplified in Kobayashi "necessarily results in being adhered between the
metal layer and the end face of the insulating layer" (Final Action 4). KSR
Int'! Co. v. Teleflex, Inc., 550 U.S. 398,416 (2007)(the predictable use of
prior art elements according to known methods for their established
functions is likely to be obvious when it does no more than yield predictable
results). "A person of ordinary skill is also a person of ordinary creativity,
not an automaton." Id. at 421.
The Examiner further makes findings with respect to adjusting the
thickness of the insulating layer such that "the metal layer and the insulating
layer are being adhered to each other (the whole system with each layer is
attached together)" (Final Action 7; in the rejection of claims 1 and 14; see
also Final Action 4 discussing claim 16).
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Application 13/580,559
Appellant does not directly address the Examiner's modification of
Iwanade to include an insulating layer as exemplified in Kobayashi (Appeal
Br. generally).
Thus, Appellant's arguments fail to adequately consider the prior art
as a whole, and do not adequately address the Examiner's obviousness
position. See In re Keller, 642 F.2d 413, 425-26 (CCPA 1981) ("The test
for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference .... Rather,
the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art."); see also e.g., In re Fritch,
972 F.2d 1260, 1264---65 (Fed. Cir. 1992) (it is well established that in
evaluating references it is proper to take into account not only the specific
teachings of the references but also the inferences which one skilled in the
art would reasonably be expected to draw therefrom).
Appellant presents new arguments regarding the claim interpretation
of claims 1 and 14 at pages 3-8 of the Reply Brief. Appellant has not shown
good cause why these arguments could not have been presented in the
Appeal Brief. Therefore, we need not consider the arguments newly raised
in the Reply Brief. 37 C.F.R. § 4I.41(b)(2). Nonetheless, these arguments
are not persuasive of reversible error in the Examiner's rejection.
For example, Appellant argues for the first time in the Reply Brief
that "when determined in light of the specification, one of ordinary skill in
the art would interpret the metal layer of claims 1 and 14 as being adhered to
the insulating layer for the purpose of preventing solder from flowing"
(Reply Br. 7).
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Application 13/580,559
Appellant, however, has not directed our attention to any limiting
definitions in the Specification, or to any persuasive reasoning or credible
evidence, to establish that the Examiner's interpretation of the language of
claims 1 or 14 ( or claim 16) is unreasonable. In any event, as noted above,
the Examiner explained that the proposed combination may reasonably
result in the metal layer and the insulating layer being adhered to one
another ( e.g., Final Action 7).
No further substantive arguments were made regarding any of the
dependent claims nor the remaining § 103 rejection of claim 8.
Accordingly, we affirm all of the Examiner's 103 rejections.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
AFFIRMED
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