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`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/316,182
`
`05/10/2021
`
`Makiko TANAKA
`
`070469-1075
`
`5533
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`PILLAY, DEVINA
`
`1726
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`07/13/2022
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime 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):
`
`mweipdocket@mwe.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-21 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`Cj} Claim(s)
`is/are allowed.
`Claim(s) 1-21 is/are rejected.
`S)
`) © Claim(s)___is/are objected to.
`Cj) Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) )
`
`Application Papers
`10)( The specification is objected to by the Examiner.
`11) The drawing(s) filed on 05/10/2021 is/are: a)[¥) accepted or b)( objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`_—_c)L) None ofthe:
`b)L) Some**
`a)¥) All
`1.4) Certified copies of the priority documents have been received.
`2.2 Certified copies of the priority documents have been received in Application No.
`3.4.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 05/10/2021.
`U.S. Patent and Trademark Office
`
`3)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20210914
`
`Application No.
`Applicant(s)
`17/316,182
`TANAKA etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`DEVINA PILLAY
`1726
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s) filed on 05/10/2021.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)() This action is FINAL. 2b)¥)This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 17/316,182
`Art Unit: 1726
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AlA or AIA Status
`
`The present application, filed on or after March 16, 2013, is being examined
`
`underthe first inventorto file provisions of the AIA.
`
`Claim Rejections - 35 USC § 102
`
`In the event the determination of the status of the application as subject to AIA 35
`
`U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103)is incorrect, any
`
`correction of the statutory basis for the rejection will not be considered a new ground of
`
`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
`
`the same under either status.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
`
`form the basis for the rejections underthis section madein this Office action:
`
`A person shall be entitled to a patent unless —
`
`(a)(1) the claimed invention was patented, described in a printed publication, or in public use,
`on sale, or otherwise available to the public before the effectivefiling date of the claimed
`invention.
`
`(a)(2) the claimed invention was described in a patent issued under section 151, orin an
`application for patent published or deemed published under section 122(b), in which the
`patent or application, as the case may be, names another inventor and waseffectively filed
`before the effectivefiling date of the claimed invention.
`
`The text of those sections of Title 35, U.S. Code not included in this action can
`
`be found in a prior Office action.
`
`Claim(s) 1-3, 11, 12, 20 and 21 is/are rejected under 35 U.S.C.
`
`102(a)(1)/102(a)(2) as being anticipated by Smythe (US 2011/0030754 A1).
`
`Regarding claim 1, Smythe discloses a thermoelectric conversion module,
`
`comprising (See Figs. 1-10):
`
`

`

`Application/Control Number: 17/316,182
`Art Unit: 1726
`
`Page 3
`
`a first thermoelectric conversion element group (230a) that includes at least one
`
`first thermoelectric member (210) and at least one second thermoelectric member (210)
`
`(see Fig. 5, [0042][0043]) the at least one first thermoelectric member including a first
`
`conductivity-type semiconductor (see side view Fig. 2, each group consists pf multiple p
`
`and n-type elements, analogous to 100, first-type is n-type/p-type), the at least one
`
`second thermoelectric member including a second conductivity-type semiconductor (p-
`
`type/n-type, 100, see Fig. 2);
`
`a second thermoelectric conversion element group (230b [0042]-[0043]) that
`
`includes at least one third thermoelectric member (110) and at least one fourth
`
`thermoelectric member (110), the at least one third thermoelectric member including the
`
`first conductivity-type semiconductor(n-type/p-type), the at least one fourth
`
`thermoelectric member including the second conductivity-type semiconductor (p-type/n-
`
`type);
`
`a first substrate (202 see Fig. 8 [0040] [0044]) connected to an upperside of the
`
`first thermoelectric conversion element group and the second thermoelectric conversion
`
`element group; and a second substrate (204 see Fig. 8 [(0040][0044]) connected to a
`
`lower side of the first thermoelectric conversion element group and the second
`
`thermoelectric conversion element group,
`
`wherein the at least one first thermoelectric member and the at least one second
`
`thermoelectric member are electrically connected to each other byafirst current path,
`
`the at least one third thermoelectric member and the at least one fourth thermoelectric
`
`member are electrically connected to each other by a second current path,
`
`

`

`Application/Control Number: 17/316,182
`Art Unit: 1726
`
`Page 4
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`and the first current path is insulated from the second current path (each of 230
`
`form their own current paths [0044]) .
`
`Regarding claim 2, Smythe disclosesall of the claim limitations as set forth
`
`above.
`
`In addition, Smythe discloses (SeeFig. 8) a first element connecting pad (216)
`
`disposed on a surface ofthe first substrate;
`
`and a second element (220c) connecting pad disposed on a surface of the
`
`second substrate,
`
`wherein the second element connecting pad is connected (physically connected
`
`through substrate to all thermoelectric elements) to the at least one first thermoelectric
`
`member, the at least one second thermoelectric member, the at least one third
`
`thermoelectric member, and the at least one fourth thermoelectric member.
`
`Regarding claim 3, Smythe disclosesall of the claim limitations as set forth
`
`above.
`
`In addition, Smyth discloses wherein the first substrate (202) is connected to the
`
`at least one first thermoelectric member, the at least one second thermoelectric
`
`member, the at least one third thermoelectric member, and the at least one fourth
`
`thermoelectric member (See Fig. 8).
`
`Regarding claim 11, Smythe discloses all of the claim limitations as set forth
`
`above.
`
`In addition, Smythe discloses (see Fig. 8) wherein the first substrate (202) or
`
`the second substrate (204) is provided withafirst positive electrode pad (216c) thatis
`
`electrically connected to the at least one first thermoelectric member,a first negative
`
`

`

`Application/Control Number: 17/316,182
`Art Unit: 1726
`
`Page 5
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`electrode pad (note opposite contact pad on n-type element that is connected to 216)
`
`that is electrically connectedto the at least one second thermoelectric member, a
`
`second negative electrode pad (one of 222) that is electrically connected to the atleast
`
`one third thermoelectric member, and a second positive electrode pad (other one of
`
`222) that is electrically connected to the at least one fourth thermoelectric member.
`
`Regarding claim 12, Smythe discloses all of the claim limitations as set forth
`
`above.
`
`In addition, Smythe wherein the first positive electrode pad, the first negative
`
`electrode pad, the second negative electrode pad, and the second positive electrode
`
`pad are disposed alongaside ofthe first substrate or a side of the second substrate
`
`(see Fig. 6).
`
`Regarding claims 20 and 21, Smythe disclosesall of the claim limitations as set
`
`forth above.
`
`In addition, Smythe discloses
`
`an extended portion (outer periphery where 108 is placed, see Fig. 1) that
`
`extends out from an end of at least one of the first substrate or the second substrate,
`
`wherein the first substrate and the second substrate arefilm-like substrates (laminates,
`
`Abstract) and
`
`wherein the extendedportion includesa third region (region which does not
`
`include traces 116) and a fourth region (region which includes traces 116), andafirst
`
`width of the third region is wider than a second width of the fourth region, the third
`
`region being closer (a portion of the third region is closer to the first substrate) to the
`
`first substrate, the fourth region being farther from the first substrate or the second
`
`

`

`Application/Control Number: 17/316,182
`Art Unit: 1726
`
`Page 6
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`substrate than the third region (a portion of the fourth region is further to the first
`
`substrate), the first width and the second width each being a width in a direction
`
`perpendicular to a longitudinal direction (no direction defined with respect to any fixed
`
`object therefore can be any direction) of the extended portion.
`
`Claim Rejections - 35 USC § 103
`
`In the event the determination of the status of the application as subject to AIA 35
`
`U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103)is incorrect, any
`
`correction of the statutory basis for the rejection will not be considered a new ground of
`
`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
`
`the same under either status.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis forall
`
`obviousnessrejections set forth in this Office action:
`
`A patent for a claimed invention may not be obtained, notwithstanding that the claimed
`invention is not identically disclosed as set forth in section 102, if the differences between the
`claimed invention and the prior art are such that the claimed invention as a whole would have
`been obvious before the effectivefiling date of the claimed invention to a person having
`ordinary skill in the art to which the claimed invention pertains. Patentability shall not be
`negated by the manner in which the invention was made.
`
`The factual inquiries for establishing a background for determining obviousness
`
`under 35 U.S.C. 103 are summarized asfollows:
`
`1. Determining the scope and contents of the prior art.
`
`2. Ascertaining the differences between the prior art and the claims at issue.
`
`3. Resolving the level of ordinary skill in the pertinent art.
`
`4. Considering objective evidence presentin the application indicating
`
`obviousness or nonobviousness.
`
`

`

`Application/Control Number: 17/316,182
`Art Unit: 1726
`
`Page 7
`
`This application currently names joint inventors. In considering patentability of the
`
`claims the examiner presumesthat the subject matter of the various claims was
`
`commonly ownedasof the effective filing date of the claimed invention(s) absent any
`
`evidenceto the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to
`
`point out the inventor and effective filing dates of each claim that was not commonly
`
`ownedas ofthe effective filing date of the later invention in order for the examiner to
`
`consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2)
`
`prior art against the later invention.
`
`Claims 4-10, 13, 14, 18 and 19 is/are rejected under 35 U.S.C. 103 as being
`
`unpatentable over Smythe (US 2011/0030754 A1).
`
`Regarding claims 4, 5, 6, 9,10, and 18, Smythedisclosesall of the claim
`
`limitations as set forth above.
`
`However, Smythe doesnotexplicitly disclose that portions of the groups 230 are
`
`interconnected to one another serially.
`
`Smythe doesdisclose that the subcircuits can be connected togetherelectrically
`
`in series, in parallel, or in an arbitrary series-parallel combination to cause a desired
`
`amountof current to pass through them evenif only a single fixed DC power source
`
`(e.g., voltage, etc.) is provided (e.g., the same current may be passing through all of the
`
`subcircuits, but it can be adjusted in real time to pump a changing amount of heat with
`
`optimum efficiency such that advantagesin both cooling and power generation may be
`
`provided, etc.) ([0054}).
`
`It would have been obvious to one orordinary skill in the art at the time offiling to
`
`modify the interconnection of the subcircuits so that they are serially interconnected with
`
`

`

`Application/Control Number: 17/316,182
`Art Unit: 1726
`
`Page 8
`
`the exception of 230a(first thermoelectric group) as disclosed by Smythe becauseit will
`
`allow for optimal cooling/energy harnessing depending on the geometry and heat
`
`generation characteristics of the device.
`
`In addition, Smythe discloses wherein a sum of a total number of the at least one
`
`third thermoelectric member and a total number of the at least one fourth thermoelectric
`
`member is greater than or equal to a sum of a total number of the at least one first
`
`thermoelectric member and a total number of the at least one second thermoelectric
`
`member (please note that the second thermoelectric conversion group is any
`
`combination of groupings of 230 except 230a,note that there are 35 groups excluding
`
`group 230a, each group consists of 4 thermoelectric elements and therefore the above
`
`condition will be met).
`
`Regarding claims 13 and 14, Smythe disclosesall of the claim limitations as set
`
`forth above.
`
`However, Smythe doesnotexplicitly disclose wherein when current flows into the
`
`first positive electrode pad and the second positive electrode pad, and flows out from
`
`the first negative electrode pad and the second negative electrode pad, a temperature
`
`of the first thermoelectric conversion element group decreases to a temperature lower
`
`than a temperature of the second thermoelectric conversion element group.
`
`In addition, Smythe discloses that different groups can havedifferent voltages
`
`passing through them so at to provide optimum cooling ([0054]).
`
`It would have been obvious to one of ordinary skill in the art at the time offiling to
`
`provide different voltages as disclosed by Smythe to different groups of thermoelectrics
`
`

`

`Application/Control Number: 17/316,182
`Art Unit: 1726
`
`Page 9
`
`so as to provide optimum cooling to the device including the condition disclosed in the
`
`aboveclaim limitation because Smythe disclosesit is obvious to do so.
`
`Regarding claims 7 and 19, modified Smythe discloses all of the claim limitations
`
`as set forth above.
`
`In addition, Smythe discloses that the substrates can accommodate sensors
`
`([(0046]) and that optimal temperature control can be provided as noted abovein the
`
`rejection of Claim 4.
`
`It would have been obvious to one of ordinary skill in the art at the time of the
`
`invention to modify either the first or second substrate to have temperature sensors
`
`because Smythe discloses that sensors can be accommodated on substrates and this
`
`will provide for optimal cooling and control to be providedbythe first and second
`
`thermoelectric groups.
`
`With regards to “wherein the first thermoelectric conversion element group is
`
`used for heat absorption and the second thermoelectric conversion element group is
`
`used for heat dissipation” this is considered an intended use limitation ),
`
`if a prior art
`
`structure is capable of performing the intended use asrecited in the preamble, then it
`
`meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429,
`
`1431 (Fed. Cir. 1997) and casescited therein, as it has been held that the recitation of a
`
`new intended use for an old product does not make a claim to that old product
`
`patentable.
`
`In re Schreiber, 44 USPQ2d 1429 (Fed. Cir. 1997). See also MPEP §
`
`2111.02, §2112.02 and 2114-2115.
`
`The modification of Smythe abovewill also disclose for the situation wherein if
`
`the first sensor associated with the first group indicates no cooling is necessary than the
`
`

`

`Application/Control Number: 17/316,182
`Art Unit: 1726
`
`Page 10
`
`first group will function to absorb heat and if the second sensor associated with the
`
`second group indicates cooling is necessary the second group will result in heat
`
`dissipation.
`
`Regarding claims 8, modified Smythe discloses all of the claim limitations as set
`
`forth above.
`
`In addition, Smythe disclosesa first wiring connecting pad and a second wiring
`
`connecting pad are disposed on the first substrate (see Fig. 6 and Fig. 8, each group
`
`contains its own set of wiring contact pads and the wiring contact pads between groups
`
`do not interconnect the groups to one another since they are on separatecircuits), the
`
`first wiring connecting pad and the second wiring connecting pad separating the first
`
`thermoelectric conversion element group and the second thermoelectric conversion
`
`element group from each other.
`
`Furthermore, Smythe discloses that a metal layer can be routed underthe
`
`groupsto allow for wiring to be routed through the substrate (see Fig. 8, 216b).
`
`It would have been obvious to one of ordinary skill in the art at the time of the
`
`invention to modify the wiring of the first thermoelectric group of modified Smythe so
`
`that it routed through the substrate such that a continuous metal layer is provided on a
`
`bottom surface of the second substrate across a boundary between a region opposite
`
`the first region and a second region so that interconnection so that the wiring is
`
`simplified because Smythe disclosesit is obvious to do so.
`
`Claims 15-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Smythe (US 2011/0030754 A1) as applied to claims 4-10, 13, 14, 18 and 19 above
`
`and in further view of Chu (US 6804966 B1).
`
`

`

`Application/Control Number: 17/316,182
`Art Unit: 1726
`
`Page 11
`
`Regarding claims 15, 16, 17, modified Smythe disclosesall of the claim
`
`limitations as set forth above.
`
`However, Smythe doesnot disclose that the thermoelectric element groups can
`
`have different thermoelectric densities such that the following conditions are achieved:
`
`e wherein a closest distance between the first thermoelectric conversion element
`
`group and the second thermoelectric conversion element group is greater than a
`
`distance between the at least one first thermoelectric member and the at least
`
`one second thermoelectric member
`
`e wherein a distance between the first thermoelectric conversion element group
`
`and the second thermoelectric conversion element group is less than a distance
`
`between the at least one third thermoelectric member and the at least one fourth
`
`thermoelectric member
`
`e wherein the distance between the first thermoelectric conversion element group
`
`and the second thermoelectric conversion element group is at least 0.1 mm and
`
`at most 2.0 mm
`
`Chu disclosesthat different thermoelectric groups can be provide different rates
`
`of cooling and this can be controlled by providing different densities of thermoelectric
`
`elements (C6/L17-39).
`
`It would have been obvious to one of ordinary skill in the art at the time offiling to
`
`modify the densities of the thermoelectric elements which are contained in the
`
`respective groupings suchthatthe first and second members are closer together, first
`
`and second member spacedat a distance ranging from 0.1 mm to 2.0mm, than third
`
`

`

`Application/Control Number: 17/316,182
`Art Unit: 1726
`
`Page 12
`
`and fourth members of modified Smythe because Chu discloses doing so would allow
`
`for optimal cooling to be delivered to necessary areas.
`
`In addition, it would have been obvious to one of ordinary skill in the at the time
`
`offiling to modify the spacing between the thermoelectric groups of modified Smythe
`
`such that the spacing is greater than the packing the one first thermoelectric member
`
`and the at least one second thermoelectric member because it will allow for optimal
`
`cooling of the necessary components of the device dependent on geometry.
`
`Notwithstanding, one of ordinary skill in the art would have been led to the recited
`
`dimensions through routine experimentation and optimization. Applicant has not
`
`disclosed that the dimensions are for a particular unobvious purpose, produce an
`
`unexpected result, or are otherwise critical, and it appears prima facie that the process
`
`would possessutility using another dimension.
`
`Indeed, it has been held that mere
`
`dimensionallimitations are prima facie obvious absent a disclosure that the limitations
`
`are for a particular unobvious purpose, produce an unexpected result, or are otherwise
`
`critical. See, for example, /n re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955); In re
`
`Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976); Gardner v. TEC Systems,Inc.,
`
`725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ
`
`232 (1984); In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to DEVINA PILLAY whose telephone numberis (571)270-
`
`1180. The examiner can normally be reached on Monday-Friday 9:30-6:00.
`
`

`

`Application/Control Number: 17/316,182
`Art Unit: 1726
`
`Page 13
`
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`
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`
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`
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`
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`
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`
`for the organization wherethis application or proceeding is assignedis 571-273-8300.
`
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`
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`
`DEVINA PILLAY
`Primary Examiner
`Art Unit 1726
`
`/DEVINA PILLAY/
`Primary Examiner, Art Unit 1726
`
`