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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/354,935
`
`06/22/2021
`
`YURIKO KANEKO
`
`083710-3427
`
`1001
`
`Rimon PC - Pansonic Corporation
`8300 Greensboro Dr.
`Suite 500
`McLean, VA 22102
`
`PILLAY, DEVINA
`
`1726
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`01/29/2024
`
`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
`following e-mail address(es):
`USPTOmail@rimonlaw.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Application No.
`Applicant(s)
`17/354,935
`KANEKOetal.
`
`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 STATUTORYPERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensionsof 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 01/02/2024.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)[¥) This action is FINAL.
`2b) (J This action is non-final.
`3) 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)(2) 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.
`
`
`
`Disposition of Claims*
`1-6 and 8-9 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) _ is/are withdrawn from consideration.
`C] Claim(s)
`is/are allowed.
`Claim(s) 1-6and8is/are rejected.
`Claim(s) 9 is/are objectedto.
`C] Claim(s
`are subjectto restriction and/or election requirement
`)
`* 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) filedon__ is/are: a)C) 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)LJ None ofthe:
`b)LJ Some**
`a)¥) All
`1.{¥) Certified copies of the priority documents have been received.
`2.1 Certified copies of the priority documents have been received in Application No.
`3.2.) 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)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`4)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20240116
`
`

`

`Application/Control Number: 17/354,935
`Art Unit: 1726
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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`The present application, filed on or after March 16, 2013,
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`is being examined
`
`underthefirst inventor to file provisions of the AIA.
`
`Claim Rejections - 35 USC § 103
`
`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) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Tamaki (US 2017/0117453 A1) in view of Xin (CN 105695774 A, Machine
`
`Translation).
`
`Regarding claim 1, Tamaki discloses a thermoelectric conversion which is
`
`polycrystalline material composed of a plurality of crystal grains [0065], the
`
`thermoelectric conversion material comprising a composition represented by ([0008])
`
`Formula (1): Mg3+mAaBpD2-eEe
`
`wherein the value of m is not less than -0.39 and not more than 0.42 (see [0033])
`
`wherein a=b=0 ((0040])
`
`wherein D can be a combination of Sb and Bi ([0036][0050])
`
`wherein E is Se or Te
`
`wherein e is between 0.001 and not more than 0.06 [0038].
`
`As noted in the Tables this is simplified to
`
`Mg3+m(Bi,Sb)2-eEe.
`
`Please note that the amount of Sb and Bi can be any combination between 1.94-
`
`1.99 therefore the amount of Sb can range from 0 to 1.99 and Bi can be any value
`
`

`

`Application/Control Number: 17/354,935
`Art Unit: 1726
`
`Page 3
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`between 1.99 to 0 and note that Sb can be less than 1 (see Table 5, Inventive Example
`
`11).
`
`Please note that the value of Tamaki overlap the values instantly claimed for m,
`
`a, and c.
`
`It would have been obvious to one of ordinary skill in the art at the time of
`
`invention to have selected the overlapping portion of the ranges disclosed by the
`
`reference because selection of overlapping portion of ranges has been held to be a
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`prima facie case of obviousness.
`
`In re Malagari, 182 USPQ 549.
`
`Tamaki does disclose that a Mg-Sb-Bi-Te powders ([0059]) ([0050]) are sintered
`
`in spark plasma sintering (SPS) method ([0062]) which is similar to the method as
`
`instantly claimed which mixes powders of Sb, Bi, Te, Mg and then subject them to spark
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`plasma sintering ([0033]-[0036] of the instant Application.
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`Tamakidiscloses it is performed at 600°C for 30 mins and lowered to room
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`temperature before it is removed ([0060]) .
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`The instant specification performs spark plasma sintering at temperatures
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`ranging between 550°C -800°C and holding these temperatures between 5 -30 mins
`
`({0036]-[0046]).
`
`Xin discloses that a MgsSb2 based thermoelectric material where spark plasma
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`sintering 650°C-750°C and holding these temperatures between 5-15 mins and
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`discloses that the boundaries of the crystalline grain structures remain unoxidized when
`
`these conditions are implemented ([0013][0009)).
`
`It would have been obviousto oneof ordinary skill in the art at the time offiling to
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`modify the sintering temperature of Tamaki and modify the temperature to be 650°C-
`
`

`

`Application/Control Number: 17/354,935
`Art Unit: 1726
`
`Page 4
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`750°C holding it between 5-15 mins as disclosed by Xin because the boundaries of the
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`crystalline grain structures remain unoxidized when these conditions are implemented.
`
`Modified Tamaki discloses the same formula as instantly claimed formed by
`
`substantially the same method and therefore will also have the Mg-rich regions as
`
`instantly claimed.
`
`Regarding claim 2, modified Tamakidiscloses all of the claim limitations as set
`
`forth above.
`
`In addition, Tamaki discloses that each of the crystal grains have La203
`
`structure ( Abstract of Tamaki and see supplementary material of Kanno P3m1).
`
`Regarding claims 3-6, modified Tamaki discloses all of the claim limitations as
`
`set forth above.
`
`Regarding product and apparatus claims, when the structure recited in the
`
`reference is substantially identical to that of the claims, claimed properties or functions
`
`are presumed to be inherent. The Courts haveheld thatit is well settled that where
`
`there is a reason to believe that a functional characteristic would be inherent in the prior
`
`art, the burden of proof then shifts to the applicant to provide objective evidence to the
`
`contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2dat
`
`1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
`
`Modified Tamaki discloses the same formula as instantly claimed formed by
`
`substantially the same method and therefore will also have the following properties:
`
`e wherein the Mg-rich region is formed in boundaries of the crystal grains
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`e wherein the thermoelectric conversion material has an Mg precipitation ratio of
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`more than or equal to 1%
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`

`

`Application/Control Number: 17/354,935
`Art Unit: 1726
`
`Page 5
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`e wherein the thermoelectric conversion material has an Mg precipitation ratio is
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`less than or equal to 20%
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`e wherein the thermoelectric conversion material has an Mg precipitation ratio is
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`less than or equal to 8%
`
`Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Tamaki (US 2017/0117453 A1) in view of Xin (CN 105695774 A, Machine
`
`Translation) as applied to claims 1-6 above andin further view of He (CN
`
`108097458 A, Machine Translation).
`
`Regarding claim 8, modified Tamakidiscloses all of the claim limitations as set
`
`forth above.
`
`However, Tamaki does not disclose a thermoelectric device but does disclose
`
`that the MgSb alloy can be used an n-type thermoelectric element (Abstract).
`
`He discloses a thermoelectric device that comprises a p-type element (304)
`
`connected to an MgSballoy n-type element (305) connected byafirst electrode (303)
`
`and another end of the p-type element (304) connected to a second electrode (306) and
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`the n-type element (305) connected to a third electrode (306) (See Fig.
`
`1 or Fig. 2
`
`[001 6]-[0023)).
`
`It would have been obviousto oneof ordinary skill in the art at time offiling to
`
`modify the n-type thermoelectric element of modified Tamaki by implementing it into a
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`thermoelectric device including a p-type thermoelectric element, first, second and third
`
`electrodes as disclosed by He because doing so would allow oneto transform thermal
`
`energy to electrical energy.
`
`

`

`Application/Control Number: 17/354,935
`Art Unit: 1726
`
`Page 6
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`Response to Arguments
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`Applicant argues that the cited referencesfail to teach the feature "the
`
`thermoelectric conversion material has an Mg-rich region" of claim 1.
`
`It appears the
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`Office Action considered that the boundaries of the crystalline grain structures remain
`
`unoxidized reads on the feature "the thermoelectric conversion material has an Mg-rich
`
`region."
`
`Examiner notes that motivation was provided by Xin who discloses boundaries of
`
`the crystalline grain structures remain unoxidized when the methodof Xin is used.
`
`However, as noted in the office action, Mg-rich are present in modified Tamaki because
`
`modified Tamaki discloses the same formula as instantly claimed formed by
`
`substantially the same method and therefore will also have the Mg-rich regions as
`
`instantly claimed.
`
`Applicant argues that Xin likely discloses a very high content of Sb and therefore
`
`in not applicable.
`
`Examiner notes that Xin discloses a similar composition to that of Tamaki and the
`
`compound which has the same crystalline structure as the composition of Tamaki (see
`
`Abstract of Tamaki and Xin [0005]). Furthermore, Xin discloses that Mg-Sb composition
`
`which hasthe crystalline structure of Tamaki can have oxidation of the grain boundaries
`
`whichallowsfor the entry of impurities which reduces the thermoelectric figure of merit
`
`([0006]) and Xin further discloses an improved method to reduceoxidation at the Mg
`
`grain boundaries and reduces impurities and improves the thermoelectric figure of merit.
`
`Therefore, Xin provides motivation to modify the method of forming the material of the
`
`thermoelectric composition of Tamaki.
`
`

`

`Application/Control Number: 17/354,935
`Art Unit: 1726
`
`Page 7
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`Allowable Subject Matter
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`Claim 7 is objected to as being dependent uponarejected base claim, but would
`
`be allowable if rewritten in independent form including all of the limitations of the base
`
`claim and any intervening claims. The closest prior art of record includes Tamaki (US
`
`2017/0117453 A1) in view of Xin (CN 105695774 A, Machine Translation). Claim 7
`
`recites a composition wherein m is greater than 0.42. Tamaki explicitly discloses that m
`
`cannot be more than 0.42.
`
`Conclusion
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`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
`
`policy as set forth in 37 CFR 1.136(a).
`
`A shortened statutory period for reply to this final action is set to expire THREE
`
`MONTHS from the mailing date of this action.
`
`In the eventa first reply is filed within
`
`TWO MONTHS of the mailing date of this final action and the advisory action is not
`
`mailed until after the end of the THREE-MONTHshortened statutory period, then the
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`shortened statutory period will expire on the date the advisory action is mailed, and any
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`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
`
`the advisory action.
`
`Inno event, however, will the statutory period for reply expire later
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`than SIX MONTHS from the mailing date of this final action.
`
`Anyinquiry 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 Monday-Friday 9:30-6:00.
`
`Examinerinterviews are available via telephone,
`
`in-person, and video
`
`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
`
`

`

`Application/Control Number: 17/354,935
`Art Unit: 1726
`
`Page 8
`
`interview, applicant is encouraged to use the USPTO AutomatedInterview Request
`
`(AIR) at http:/Avwww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Jeffrey T Barton can be reached on 517-272-1307. The fax phone number
`
`for the organization where this application or proceeding is assigned is 571-273-8300.
`
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`
`DEVINA PILLAY
`Primary Examiner
`Art Unit 1726
`
`/DEVINA PILLAY/
`Primary Examiner, Art Unit 1726
`
`