Ex Parte Teunissen et al

Patent Trial and Appeal Board

Sep 8, 2017

13381468 (P.T.A.B. Sep. 8, 2017)

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.
13/381,468 12/29/2011 Ralph Teunissen 5372-39PUS 5076
20311 7590 09/12/2017
LUCAS & MERCANTI, LLP
30 BROAD STREET
21st FLOOR
NEW YORK, NY 10004
EXAMINER
BERMAN, JASON
ART UNIT PAPER NUMBER
1756
NOTIFICATION DATE DELIVERY MODE
09/12/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RALPH TEUNISSEN and GERHARD SPAN
Appeal 2017-000289
Application 13/381,468
Technology Center 1700
Before ROMULO H. DELMENDO, GRACE KARAFFA OBERMANN,
and JENNIFER R. GUPTA, Administrative Patent Judges.
OBERMANN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek relief from the Examiner’s final rejection of
claims 14-26 under 35 U.S.C. § 112, first paragraph, and 35 U.S.C.
§ 103(a).1 Appeal Br. 2-8. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
The invention relates to a method for producing thermoelectric layers
by deposition of thermoelectric material onto a substrate by sputter
1 Appellants identify O-Flexx Technologies GmbH as the real party in
interest. Appeal Br. 1.
Appeal 2017-000289
Application 13/381,468
deposition. Spec. 1. The thermoelectric effect, also called the “Seebeck
effect,” describes the reversible interaction between temperature and
electricity. Id. at 2. Thermoelectric materials, including semiconductor
materials, convert thermal energy into electrical energy and may be useful
for thermoelectric generators. Id.
The specification discusses conventional sputtering, which attempts to
achieve a high degree of crystallization to obtain good thermoelectric
properties in a thin layer—the goal being to produce a thin layer consisting
of a single crystal. Id. at 3. The specification states, however, that thin
layers suffer from a disadvantage, because the current flow through them is
limited and, as a result, the thermoelectric generators produced from them
cannot deliver much power. Id.
A goal of the invention is to provide a method for producing
thermoelectric layers that have higher Seebeck coefficients and are better
suited for use in thermoelectric generators. Id. at 4. The specification
describes a method of making thermoelectric materials by magnetron sputter
deposition, which leads to a low degree of crystallization. Id. The
specification states that the inventors made the “surprising discovery” that
such materials, despite having a low degree of crystallization, have a high
Seebeck coefficient and, thus, provide improved efficiency in a
thermoelectric generator. Id. at 4. As a result, according to the
specification, the invention eliminates previous limitations on the thickness
of thermoelectric layers. Id. at 5.
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Appeal 2017-000289
Application 13/381,468
Claim 14 is illustrative and is reproduced below.
A method for producing thermoelectric layers configured
for thermoelectric generators by depositing thermoelectric
material onto a substrate by sputter deposition, comprising the
steps of
producing a target of thermoelectric material by mixing
together at least two powdered starting materials in a particle
size of 0.01-5000.00 pm under the input of energy by one of
mechanical alloying and plasma alloying, wherein the
mechanical alloying includes grinding the powdered starting
materials, and the input of energy is achieved through loads
delivered by impacts and shocks during the grinding, and
depositing the thermoelectric material from the target
onto the substrate by magnetron sputter deposition, thereby
forming the thermoelectric layers configured for thermoelectric
generators, where a magnetic field is superimposed on an
electric field produced by a target cathode and an anode and
only a DC gas discharge between the target cathode and the
anode serves as an ion source for the magnetron sputter
deposition.
OPINION
Rejection under 35 U.S.C. § 112, First Paragraph
The Examiner rejects claims 14-26 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Final Action 3. Specifically, the Examiner finds that the claim limitation
reciting “only a DC gas discharge” introduces new matter relative to the
disclosure as filed originally. Id. The Examiner acknowledges that the
specification indicates the use of DC power, but argues that the specification
does not support precluding other sources of power being used concurrently
with DC power. Id.
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Appeal 2017-000289
Application 13/381,468
Appellants, meanwhile, rely on the specification’s disclosure that “[a]
DC gas discharge between the target cathode 19 and the anode 20 serves as
the ion source.'1'’ Appeal Br. 3 (quoting Spec. 12). We agree with Appellants
that this disclosure provides sufficient written description support for the
claim limitation reciting that “only a DC gas discharge . . . serves as an ion
source.” The specification does not use the word “only” to modify the “DC
gas discharge,” but “the description need not be in ipsis verbis to be
sufficient.” Martin v. Johnson, 454 F.2d 746, 751 (CCPA 1972). Here, we
find that the specification reasonably conveys to one of ordinary skill in the
art that the DC gas discharge is being used alone as the ion source because
the specification states that “[a] DC gas discharge . . . serves as the ion
sourcewhere (i) the “ion source” is singular; and (ii) the word “the”
further connotes singularity by referring back to the singularly-identified DC
gas discharge. Spec. 13 (emphasis added).
Rejection under 35 U.S.C. § 103(a)
We need only address the Examiner’s obviousness rejection under
35 U.S.C. § 103(a) of claim 14, the limitations of which are required by all
of the other claims.
The Examiner rejects claim 14 as obvious over Takahashi,2 DeSteese,3
Kojima,4 and Wen.5 Final Action 4-5. The Examiner relies on Takahashi
for a disclosure of magnetron sputter deposition; DeSteese for a disclosure
2 US 2010/0206724 A1 (published Aug. 19,2010).
3 US 7,851,691 B2 (issued Dec. 14, 2010).
4 US 2009/0130365 A1 (published May 21, 2009).
5 US 2002/0130041 A1 (published Sept. 19, 2002).
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Appeal 2017-000289
Application 13/381,468
of using DC and RF power in the context of sputter deposition of
thermoelectric materials; and Kojima for a disclosure of using either DC or
RF power for sputter deposition. See Final Action 4-5 (citing Takahashi
^ 3; DeSteese, 3:35^10, 6:4; and Kojima 156-157).
Appellants disagree that this combination of prior art references
discloses depositing thermoelectric material by magnetron sputter deposition
using only a DC gas discharge. Appeal Br. 8. Specifically, Appellants
argue that one of ordinary skill in the art would not have modified DeSteese
to include the use of DC power as the sole power source in a magnetron
sputtering method as required by claim 14. Appeal Br. 5; Reply Br. 2-3.
In support of that factual proposition, Appellants cite three “technical
support references” alleged to show that DC magnetron sputtering leads to a
lower degree of crystallization. Appeal Br. 5-6.6 One reference identified
by Appellants states that “[t]wo different magnetron sputtering techniques
with RF and DC plasma discharge modes were tested for room temperature
deposition” in which “[t]he RF sputtered [indium tin oxide] layers show a
crystalline structure . . . while the DC layers are amorphous.” Kurdesau,
supra note 6, Abstract. Accordingly, Appellants argue that one of ordinary
skill in the art would have expected the use of DC power alone to lead to a
lower degree of crystallization and a worsening of the Seebeck coefficient,
6 Appellants cite to (i) F. Kurdesau et al., Comparative Study of ITO Layers
Deposited by DC and RF Magnetron Sputtering at Room Temperature, 352
J. Non-Crystalline Solids 1466 (2006); (ii) Edgar Alfonso et al., Thin Film
Growth Through Sputtering Technique and Its Applications, in
Crystallization—Sci. & Tech. 397 (2012); and (iii) M.F. Cerqueira et al.,
Microcrystalline Silicon Thin Films Prepared by RF Reactive Magnetron
Sputter Deposition, 46 Vacuum 1385 (1995).
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Appeal 2017-000289
Application 13/381,468
detrimental to a thermoelectric generator, and would not have considered
using DC magnetron sputtering for this reason. Appeal Br. 6-8; Reply Br. 2.
In response, the Examiner relies on Kojima, which discloses
sputtering carried out using either a DC power supply or an RF power
supply. Answer 6 (citing Kojima]} 150). Appellants, however, argue that
the Examiner did not address the technical support references, and further
explain:
Kojima pertains to the manufacture of a recording
material, not a thermoelectric layer. A recording material is not
required to have any Seebeck effect. Thus, the effects of DC
magnetron sputtering on the Seebeck coefficient does not
matter for Kojima. However, the effects of DC magnetron
sputtering on the Seebeck coefficient do matter for making a
thermoelectric layer and a person having ordinary skill in the art
making a thermoelectric layer would not use DC magnetron
sputtering.
Reply Br. 2-3.
We agree with Appellants that the Examiner does not adequately
explain why one of ordinary skill in the art would have applied Kojima’s
teaching of using DC power alone, in a method of manufacturing a recording
material, to a method of “forming the thermoelectric layers configured for
thermoelectric generators” as specified in claim 14, in view of the evidence
submitted by Appellants suggesting that DC magnetron sputtering
detrimentally affects crystallinity. Specifically, the Examiner does not
adequately address the technical support references relied on by Appellants.
It is error for the Examiner to disregard factual evidence that is presented to
rebut a prima facie case of obviousness. See In re Chu, 66 F.3d 292, 298
(Fed. Cir. 1995) (holding that the Board was not free to disregard evidence
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Application 13/381,468
in the form of technical articles submitted during prosecution in response to
an obviousness rejection).
The Examiner generally acknowledges Appellants’ evidence as
showing “that different results are obtained from different power sources,”
then determines that one of ordinary skill in the art would have been led to
“experiment with and use the desired power sources and combinations
thereof.” Answer 6. That explanation does not show adequately why one of
ordinary skill in the art would have had a reason to pursue the option of
experimenting with magnetron sputtering using a DC power source alone in
an application for forming thermoelectric layers configured for
thermoelectric generators, notwithstanding the technical support references
advanced by Appellants, which suggest a detrimental effect on crystallinity.
ORDER
The Examiner’s decision to reject claims 14-26 under 35 U.S.C.
§§ 103(a) and 112, first paragraph, is reversed.
REVERSED
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