Ex Parte Weiss et al

Patent Trial and Appeal Board

Apr 22, 2013

12288560 (P.T.A.B. Apr. 22, 2013)

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.
12/288,560 10/21/2008 Dirk N. Weiss PA-0003709-US 6405
7590 04/22/2013
M.P. Williams
210 Main Street
Manchester, CT 06042
EXAMINER
PILLAY, DEVINA
ART UNIT PAPER NUMBER
1755
MAIL DATE DELIVERY MODE
04/22/2013 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 DIRK N. WEISS, THOMAS D. RADCLIFF, and
RHONDA R. WILLIGAN
__________

Appeal 2011-00892
Application 12/288,560
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH, and
LINDA M. GAUDETTE, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-004892
Application 12/288,560

2

A. STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134 from an Examiner’s
decision finally rejecting claims 1-15, which are all of the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
The subject matter on appeal is directed to a thermoelectric device wherein
n-type and p-type super lattice thin-film and/or bulk thermoelectric semiconductor
elements are interspersed in a stack with electrically and thermally conductive
interconnects disposed between adjacent elements. Spec., para. [0001]. Claim 1,
reproduced below, is illustrative.
1. A device (31, 31a, 31b) characterized by a plurality of
thermoelectric alloy elements of the p-type (32, 34, 36) and of the n-
type (33, 35, 37) arranged serially, the n-type being interspersed with
the p-type, each n-type element being separated from an adjacent p-
type element by a thermally and electrically conductive interconnect
(40-45) which electrically and thermally connect each element with
any adjacent element to form a couple (46), each interconnect
occupying the entire space between adjacent elements, each n-type
element being contiguous with a first surface of a related interconnect,
and each p-type element being contiguous with a second surface of
the related interconnect which is opposite to the first surface,
alternating interconnects extending away from said elements in
opposite directions, such that the odd numbered interconnects (41, 43,
45) extend in one direction and the even numbered interconnects (40,
42, 44) extend in a second direction opposite said one direction, either
(a) only said n-type elements or only said p-type elements or (b) both
said n-type elements and said p-type are thin-film super lattice
elements comprising many hundreds of thin-film layers (A, B) in
which there are layers of first thermoelectric alloys interspersed with
layers of second thermoelectric alloys, the thermoelectric alloys
forming the layers in p-type elements being different from the
thermoelectric alloys forming layers in n-type elements.
Appeal 2011-004892
Application 12/288,560

3

App. Br., Claims Appendix (emphasis added).1
The following grounds of rejection are before us on appeal:2
(1) the rejection of claims 1-3, 6, and 11-133 under 35 U.S.C. § 103(a) as
unpatentable over Akiba4 in view of Venkatasubramanian 3325;
(2) the rejection of claims 1-5 and 11-13 under 35 U.S.C. § 103(a) as
unpatentable over Akiba in view of Venkatasubramanian 2796;
(3) the rejection of claims 7-10 under 35 U.S.C. § 103(a) as unpatentable
over Akiba in view of Venkatasubramanian 332 and further in view of Nagasaki7;
(4) the rejection of claim 14 under 35 U.S.C. § 103(a) as unpatentable
over Akiba in view of Venkatasubramanian 332 or Venkatasubramanian 279 and
further in view of Sato8; and

1 Appeal Brief dated September 23, 2010.
2 The rejection of claim 15 under 35 U.S.C. § 112, second paragraph, has been
withdrawn by the Examiner. See Examiner’s Answer dated November 22, 2010
(“Ans.”), at 3.
3 The Examiner did not include claims 11-13 in the statement of the rejection.
However, on pages 5-6 of the Final Office Action dated March 16, 2010, and on
page 6 of the Examiner’s Answer, the Examiner contends that claims 11-13 are
rendered obvious by the combination of Akiba and Venkatasubramanian 332. The
Appellant does not present arguments in support of the separate patentability of
claims 11-13. See App. Br. 5 (“Claims 11-13 are superlattice size and numbers,
and are not argued herein.”). Therefore, the Examiner’s error is harmless.
4 US 6,894,215 B2 issued May 17, 2005.
5 US 2003/0230332 A1 published December 18, 2003.
6 US 2003/0099279 A1 published May 29, 2003.
7 US 2004/0042181 A1 published March 4, 2004.
8 US 6,083,770 issued July 4, 2000.
Appeal 2011-004892
Application 12/288,560

4

(5) the rejection of claim 15 under 35 U.S.C. § 103(a) as unpatentable
over Akiba in view of Venkatasubramanian 332 as evidenced by
Venkatasubramanian 351.9
B. DISCUSSION
1. Claim 1
The only limitation at issue in claim 1 is:
either (a) only said n-type elements or only said p-type elements or (b)
both said n-type elements and said p-type are thin-film super lattice
elements comprising many hundreds of thin-film layers (A, B).
App. Br., Claims Appendix (claim 1).
The Examiner does not find that the n- and p-type elements (i.e.,
thermoelectric elements) in the stacked device of Akiba are super lattice elements.
However, the Examiner finds that both Venkatasubramanian 332 and
Venkatasubramanian 279 disclose a stacked device comprising n- and p-type super
lattice elements as recited in claim 1. The Examiner concludes that it would have
been obvious to one of ordinary skill in the art to replace the n- and/or p-type
elements disclosed in Akiba with the n- and/or p-type elements disclosed in
Venkatasubramanian 332 or Venkatasubramanian 279 because these elements are
effective as thermoelectric elements and have higher efficiencies. Ans. 4-5, 7-8.
The Appellants argue the higher efficiencies referred to by the Examiner in
Venkatasubramanian 332 and Venkatasubramanian 279 relate to n- or p-type
elements rather than the complete device (e.g., a device as recited in claim 1). The
Appellants argue the efficiencies of the individual n- and p-type elements do not
suggest their use in a stacked device. App. Br. 8-9, 11-12; Reply Br. 3, 4-6.

9 US 6,071,351 issued June 6, 2000.
Appeal 2011-004892
Application 12/288,560

5

The Appellants’ argument is not persuasive of reversible error. To support
the conclusion of obviousness, the Examiner also relies on the fact that both
Venkatasubramanian 332 and Venkatasubramanian 279 teach using n- and p-type
super lattice elements in a stacked device. See, e.g., Venkatasubramanian 332,
para. [0051] (suggesting the interchangeability of bulk, thin film, and super lattice
elements in a stacked device). The Appellants do not address this point. Thus, on
this record, the preponderance of the evidence supports the conclusion that the n-
and p-type super lattice elements disclosed in Venkatasubramanian 332 and
Venkatasubramanian 279 would have been suitable substitutes for the n- and p-
type elements in the stacked device of Akiba.
The Appellants also argue that neither Venkatasubramanian 332 nor
Venkatasubramanian 279 suggests that super lattice and bulk elements may be
mounted in the same device and thus form a hybrid device. App. Br. 9, 11.
However, claim 1 is not limited to a hybrid device. See claim 1 (encompassing a
device wherein “both said n-type elements and said p-type elements are thin-film
super lattice elements”).
For the reasons set forth above, the § 103(a) rejections of claim 1 will be
sustained. The Appellants do not present separate arguments in support of the
patentability of claims 2-5, 11-13, and 15, which depend from claim 1. Therefore,
the § 103(a) rejections of claims 2-5, 11-13, and 15 will also be sustained. See 37
C.F.R. § 41.37(c)(1)(iv) (2012).
2. Claim 6
Claim 6 depends from claim 1 and recites that the device is “further
characterized in that either said n-type elements (33a) or said p-type elements (34a)
are bulk elements.” App. Br., Claims Appendix. The Appellants argue claim 6
Appeal 2011-004892
Application 12/288,560

6

requires a hybrid device comprising both bulk elements and super lattice elements
and contends the prior art of record does not suggest such a hybrid device. App.
Br. 10; Reply Br. 3.
The Appellants’ argument is not persuasive of reversible error. As correctly
pointed out by the Examiner, Venkatasubramanian 332 discloses stacked devices
wherein the first and second thermoelectric elements (p, n) “may each be a bulk
element, a thin film element, or a super lattice element.” Venkatasubramanian
332, at paras. [0013], [0017], [0021]; see also Ans. 16. The Examiner concludes
that one of ordinary skill in the art would have arrived at the hybrid device recited
in claim 6 based on the combined teachings of Akiba and Venkatasubramanian 332
because the number of elements disclosed in Venkatasubramanian 332 (and thus,
the resulting combinations) is limited. Ans. 16. Significantly, the Appellants have
failed to explain, in any detail, why the Examiner’s position is erroneous.
Therefore, the § 103(a) rejection of claim 6 will be sustained.
The Appellants do not present separate arguments in support of the
patentability of claims 7-10, which depend from claim 6. Therefore, the § 103(a)
rejection of claims 7-10 will also be sustained. See 37 C.F.R. § 41.37(c)(1)(iv)
(2012).
3. Claim 14
Claim 14 depends from claim 1 and recites that the device is “further
characterized in that each interconnect is joined to corresponding elements (32-37,
33a, 34a) by diffusion bonding.” App. Br., Claims Appendix. The Appellants
disclose that elements 32-27, 33a, and 34a are thermoelectric elements. Spec.,
paras. [0024], [0031]. Thus, we interpret claim 14 as reciting that each
interconnect is joined to a thermoelectric element by diffusion bonding. See Spec.,
Appeal 2011-004892
Application 12/288,560

7

para. [0029] (“When the interfaces of elements 32-27 are joined to related
interconnects 40-45 by diffusion bonding, thereby eliminating solder, the overall
device figure of merit improves to 1.45.”).
Directing us to Sato Figure 1, the Examiner finds a diffusion bond is formed
on the surface of the semiconductor (10) and further finds that “additional metal
layers including the interconnect which is a metallic electrode [, e.g., electrode (70)
in Sato Fig. 1,] will bond more strongly to the thermoelectric elements.” Ans. 19,
20-21.
However, the Appellants argue “[t]here is not a hint of diffusion bonding of
thermoelements (semiconductors) to the interconnects (the ‘external electrical
circuits’ of Sato et al); Sato et al uses solder.” App. Br. 13-14.
In particular, Sato discloses:
As shown in FIG. 1, each of the thermoelectric semiconductor
10 is formed to have opposed faces which are connected respectively
to the electrodes 70, typically by use of a soldering material 60 Fig. 1,
such as Sn-Pb.
Sato, col. 3, ll. 55-58.
Thus, in Sato Figure 1, the interconnect (i.e., electrode (70)) is connected to
the semiconductor element (10) by means of a soldering material and is not joined
to a thermoelectric element by diffusion bonding as required by claim 14.
Significantly, the Examiner has not addressed the Appellants’ argument or this
disclosure in Sato. Therefore, we cannot sustain this rejection of claim 14.
C. DECISION
Upon consideration of the record and for the reasons stated above, it is
hereby
Appeal 2011-004892
Application 12/288,560

8

ORDERED that the rejection of claims 1-3, 6, and 11-13 under 35 U.S.C.
§ 103(a) as unpatentable over Akiba in view of Venkatasubramanian 332 is
affirmed; and it is
FURTHER ORDERED that the rejection of claims 1-5 and 11-13 under 35
U.S.C. § 103(a) as unpatentable over Akiba in view of Venkatasubramanian 279 is
affirmed; and it is
FURTHER ORDERED that the rejection of claims 7-10 under 35 U.S.C.
§ 103(a) as unpatentable over Akiba in view of Venkatasubramanian 332 and
further in view of Nagasaki is affirmed; and it is
FURTHER ORDERED that the rejection of claim 15 under 35 U.S.C.
§ 103(a) as unpatentable over Akiba in view of Venkatasubramanian 332 as
evidenced by Venkatasubramanian 351 is affirmed; and it is
FURTHER ORDERED that the rejection of claim 14 under 35 U.S.C.
§ 103(a) as unpatentable over Akiba in view of Venkatasubramanian 332 or
Venkatasubramanian 279 and further in view of Sato is reversed; and it is
FURTHER ORDERED that no time period for taking any subsequent action
in connection with this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

tc