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 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 06/11/2013
M.P. Williams
210 Main Street
Manchester, CT 06042
EXAMINER
PILLAY, DEVINA
ART UNIT PAPER NUMBER
1755
MAIL DATE DELIVERY MODE
06/11/2013 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 APPEAL dated April
22, 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;
(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;

1 Hereinafter referred to as the “Decision.”
Appeal 2011-004892
Application 12/288,560

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(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.
For the reasons set forth below, the Request is GRANTED-IN-PART.
I.
On rehearing, the Appellants focus on claims 1 and 6. As to claim 1, the
Appellants argue the Board incorrectly stated that the Examiner found both
Venkatasubramanian publications disclose a “stacked device.”2 The Appellants
contend, “Belief that the Examiner had so found is a misapprehension which would
possibly sway the Board toward [sic, away from] the conclusion reached in the
DECISION.” Request 2.
A review of the Examiner’s Answer reveals that the Examiner did not refer
to the devices disclosed in the Venkatasubramanian publications as “stacked”
devices. However, both publications, like Akiba, disclose “thermoelectric”
devices. The Examiner found the Venkatasubramanian devices comprise n- and/or
p-type thermoelectric elements which are comprised of the claimed super lattice

2 The Appellants define “stacked devices” in paragraph [0004] of the Specification:

[T]he p-type devices are separated from interspersed n-type devices
by electrically and thermally conductive interconnects; the even
numbered interconnects extend outwardly in a first direction, and the
odd numbered interconnects extend outwardly in a second direction
opposite to the first direction. The p-type and n-type elements
contacting each interconnect form a thermoelectric couple therewith.
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Application 12/288,560

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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 addressed this reasoning by the Examiner. See Decision 5
(pointing out the Appellants do not address this alternative reason for combining
the teachings of Akiba with Venkatasubramanian 332 or Venkatasubramanian
279).
Claim 6 depends from claim 1 and recites “that either said n-type elements
(33a) or said p-type elements (34a) are bulk elements.”3 App. Br., Claims
Appendix. Relying on Venkatasubramanian 332, the Examiner found, and the
Appellants do not dispute, that bulk elements, thin film elements, and super lattice
elements were all known to be useful as p- and n-type thermoelectric elements at
the time of the Appellants’ invention. Ans. 16. However, the Appellants argue
that Venkatasubramanian 332 does not suggest intermixing these elements in a
single device because Venkatasubramanian 332 does not disclose a stacked device.
Request 3-4.
To the extent that Venkatasubramanian 332 does not disclose a “stacked”
device, Venkatasubramanian 332 does disclose a thermoelectric device comprising
n- and p-type elements. Venkatasubramanian discloses that “[t]he first and second
thermoelectric elements [(p, n)] may each be a bulk element, [a] thin film element,

3 According to the Appellants, claim 6 is directed to a hybrid device. App. Br. 10;
Reply Br. 3. However, as pointed out on page 5 of the Decision, claim 1 is not
limited to a hybrid device.
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Application 12/288,560

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or a superlattice element.”4 Venkatasubramanian 332, paras. [0013], [0017],
[0021]. This disclosure reasonably suggests that in a single device, the n- type
thermoelectric elements may be different from the p-type thermoelectric elements.
The Examiner relied on Akiba as teaching a stacked device and concluded
that the combined teachings of Akiba and Venkatasubramanian would have led one
of ordinary skill in the art to the hybrid recited in claim 6 because the number of
elements disclosed in Venkatasubramanian 332 (and thus, the resulting
combinations of elements) is limited. Ans. 16. In the Decision, we indicated that
“the Appellants have failed to explain, in any detail, why the Examiner’s position
is erroneous.” Decision 6. On rehearing, the Appellants argue that “perhaps the
DECISION has overlooked the Appellants’ Brief on Appeal at page 10, lines 6-12
and has overlooked Appellants’ Reply Brief at page 3, lines 14-18.” Request 4.
These portions of the briefs were not overlooked. Rather, they were found to be
conclusory and thus, not persuasive of reversible error.
II.
Based on the foregoing, the § 103(a) rejections of claims 1-13 and 15 are
sustained. However, since the Board incorrectly stated that the Examiner found
both Venkatasubramanian publications disclose a “stacked device,” this
DECISION ON REHEARING will be denominated a new DECISION ON
APPEAL.

4 The Appellants argue “the DECISION misapprehended the sentence quoted on
page 6, lines 6 and 7 taken from paragraph 51 of the ‘332 [Venkatasubramanian]
reference.” Request 3. However, the sentence quoted on page 6, lines 6 and 7 of
the Decision is not from paragraph [0051] of Venkatasubramanian but rather is
from paragraphs [0013], [0017], and [0021] of Venkatasubramanian 332. A
citation to paragraph [0051] of Venkatasubramanian 332 may be found on page 5,
lines 4 through 6 of the Decision.
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Application 12/288,560

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Accordingly, it is hereby
ORDERED that the Examiner’s decision rejecting claims 1-13 and 15
under 35 U.S.C. § 103 over the prior art of record is affirmed, and it is
FURTHER ORDERED that the Appellants may reopen prosecution or
request rehearing under 37 C.F.R. § 41.50(b) (2011) in response to this DECISION
ON REHEARING, 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)
(2011).

GRANTED-IN-PART
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