Ex Parte Weiss et al

Patent Trial and Appeal Board

Sep 30, 2013

12288560 (P.T.A.B. Sep. 30, 2013)

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.
12/288,560 10/21/2008 Dirk N. Weiss PA-0003709-US 6405
7590 09/30/2013
M.P. Williams
210 Main Street
Manchester, CT 06042
EXAMINER
PILLAY, DEVINA
ART UNIT PAPER NUMBER
1755
MAIL DATE DELIVERY MODE
09/30/2013 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 2011-004892
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 REHEARING
The Appellants request rehearing of a DECISION ON REHEARING dated
June 11, 2013,1 sustaining the following Examiner’s rejections:
(1) 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;

1 The DECISION ON REHEARING dated June 11, 2013, was denominated a new
DECISION ON APPEAL. See DECISION ON REHEARING dated June 11, 2013
(hereinafter “Decision”), at 4.
Appeal 2011-004892
Application 12/288,560

2

(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 279;
(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 Nagasaki;
and
(4) 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.
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 the request for rehearing except as permitted by 37 C.F.R.
§ 41.52(a)(2) through (a)(4). 37 C.F.R. § 41.52(a)(1) (2012).
For the reasons set forth below, the Request is DENIED.
I.
As to claim 1, the focus of the Appellants’ Request relates to the following
discussion by the Board on pages 2-3 of the Decision:
The Examiner found the Venkatasubramanian devices comprise n-
and/or p-type thermoelectric elements which are comprised of the
claimed super lattice material. The Examiner concluded that these
super lattice elements would have been suitable substitutes for the n-
and p-type elements in the thermoelectric device of Akiba. Ans. 4-5,
7-8; see also Ans. 14-15 (finding Venkatasubramanian 332 teaches
the disclosed super lattice material is a known material for
thermoelectric elements); Ans. 18 (finding Venkatasubramanian 279
teaches the disclosed super lattice material is a known material for
thermoelectric elements). On appeal, the Appellants have not
Appeal 2011-004892
Application 12/288,560

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addressed this reasoning by the Examiner. See Decision [dated April
22, 2013, at ]5 (pointing out the Appellants do not address this
alternative reason for combining the teachings of Akiba with
Venkatasubramanian 332 or Venkatasubramanian 279). [Emphasis
added.]
On rehearing, the Appellants direct our attention to page 6, lines 6 to 10 of
the Appeal Brief and page 3, lines 3 to 7, page 4, lines 2 to 5, page 5, line 19 to
page 6, line 3 of the Reply Brief and contend the Board overlooked these portions
of the record. Request 2-3.2
As explained on page 4 of the Decision on Appeal dated April 22, 2013, the
Examiner provided two different reasons to support the legal conclusion of
obviousness. The Examiner concluded 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 p-type elements disclosed in Venkatasubramanian 332 or
Venkatasubramanian 279 because these elements [1] are effective as
thermoelectric elements and [2] have higher efficiencies.” Decision on Appeal
dated April 22, 2013, at 4 (citing Ans. 4-5, 7-8).
Page 3, lines 3 to 7 and page 5, line 19 to page 6, line 3 of the Reply Brief,
identified above, relate to the Examiner’s second reason in support of obviousness
(i.e., higher efficiencies) rather than the Examiner’s first reason (i.e., effective as
thermoelectric elements). See Reply Br. 3, ll. 3-7 (arguing that the higher
efficiencies in ¶55 of Venkatasubramanian 332, on which the Examiner bases the
conclusion of obviousness, are for p- or n- type couples); Reply Br. 5, l. 19-6, l. 3
(arguing the high ZT of the super lattice material does not support a suggestion to

2 Second Request for Rehearing dated July 26, 2013.
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Application 12/288,560

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make stacked configurations). The Board addressed these portions of the Reply
Brief in their proper context. See Decision on Appeal dated April 22, 2013, at 4-5.
Page 6, lines 6 to 10 of the Appeal Brief and page 4, lines 2 to 5 of the Reply
Brief, identified above, discuss paragraphs [0008] to [0010] and paragraph [0007],
respectively, of the Appellants’ Specification. To the extent that the Appellants are
relying on these portions of the Appeal Brief and the Reply Brief on rehearing to
establish that the n- and p-type elements disclosed in Venkatasubramanian 332 and
Venkatasubramanian 279 would not have been suitable substitutes for the n- and p-
type elements in the thermoelectric device of Akiba, this argument is presented for
the first time on appeal.3 Thus, the argument could not have been misapprehended
or overlooked by the Board. See 37 C.F.R. § 41.52(a)(1) (2012).
II.
As to claim 6, the Board found “Venkatasubramanian [332] discloses that
‘[t]he first and second thermoelectric elements [(p, n)] may each be a bulk element,
[a] thin film element, or a superlattice element.’” Decision 3-4 (citing to
Venkatasubramanian 332, paras. [0013], [0017], [0021]). The Board explained
that “‘[t]his disclosure reasonably suggests that in a single device, the n-type
thermoelectric elements may be different from the p-type thermoelectric
elements.’” Decision 4. On rehearing, the Appellants argue that paragraph [0051]

3 We note that the Appellants state, in paragraph [0010] of their Specification, that
“overall device figures of merit which are higher than those attainable in
conventional devices” were achieved by, inter alia, “incorporating superlattice
thin-film elements . . . in stacked thermoelectric device configurations.” On
appeal, the Appellants have not relied on “unexpected results” to rebut the
Examiner’s prima facie case of obviousness.
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of Venkatasubramanian 332 is evidence to the contrary and demonstrates that the
Board engaged in impermissible hindsight. Request 3-4.
Paragraph [0051] of Venkatasubramanian 332 states, in relevant part, that
“[t]he thermoelements may be n- or p-type, and may be bulk, thin film or
superlattice type elements.” Assuming for the sake of argument that this paragraph
is limited to a device comprising p- or n-type thermoelectric elements, the entire
disclosure of Venkatasubramanian 332 is not limited to such a device. See, e.g.,
Venkatasubramanian 332, Fig. 4; Ans. 14 (stating that Venkatasubramanian 332
“discloses that superlattice materials can be used in p-n junction devices
throughout the disclosure [0037]-[0040]”). Thus, the Board did not misapprehend
paragraphs [0013], [0017], and [0021] of Venkatasubramanian 332 and engage in
impermissible hindsight.
III.
The Appellants’ request for rehearing has been granted to the extent that the
DECISION ON REHEARING dated June 11, 2013, has been reconsidered in light
of the Appellants’ arguments. However, the request is denied because we decline
to modify the decision in any respect.
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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