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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
`
`17/354,935
`
`06/22/2021
`
`YURIKO KANEKO
`
`083710-3427
`
`1001
`
`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
`
`10/03/2023
`
`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*
`1-8 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`5a) Of the above claim(s) ___ is/are withdrawn from consideration.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) 1-8 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 06/22/2021 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 06/22/2021.
`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 20230711
`
`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 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 06/22/2021.
`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: 17/354,935
`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, is being examined
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`under the first inventor to file provisions of the AIA.
`
`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
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`correction of the statutory basis (i.e., changing from AIA to pre-AlA) for the rejection will
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`not be considered a new ground of rejection if the prior art relied upon, and the rationale
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`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 for all
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`obviousnessrejections setforth in this Office action:
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`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 whichthe invention was made.
`
`The factual inquiries for establishing a background for determining obviousness
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`under 35 U.S.C. 103 are summarized as follows:
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`1. Determining the scope and contents of the prior art.
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`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence presentin the application indicating
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`obviousness or nonobviousness.
`
`

`

`Application/Control Number: 17/354,935
`Art Unit: 1726
`
`Page 3
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`This application currently namesjoint inventors. In considering patentability of the
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`claims the examiner presumes that the subject matter of the various claims was
`
`commonly ownedasofthe effective filing date of the claimed invention(s) absent any
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`evidenceto the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to
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`point out the inventor and effective filing dates of each claim that was not commonly
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`ownedasofthe effectivefiling date of the later invention in order for the examiner to
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`consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2)
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`prior art against the later invention.
`
`Claim(s) 1-7 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 claims 1 and 7, Tamaki discloses a thermoelectric conversion whichis
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`polycrystalline material composed ofa plurality of crystal grains [0065], the
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`thermoelectric conversion material comprising a composition represented by ([0008])
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`Formula (I): 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])
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`wherein D can be a combination of Sb and Bi ([0036][0050])
`
`wherein E is Se or Te
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`wherein e is between 0.001 and not more than 0.06 [0038].
`
`As noted in the Tables this is simplified to
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`Mg3+m(Bi,Sb)2-eEe.
`
`

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`Application/Control Number: 17/354,935
`Art Unit: 1726
`
`Page 4
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`Please note that the amount of Sb and Bi can be any combination between 1.94-
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`1.99 therefore the amount of Sb can range from 0 to 1.99 and Bi can be any value
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`between 1.99 to 0 and note that Sb can be less than 1 (see Table 5, Inventive Example
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`11).
`
`Please note that the value of Tamaki overlap the values instantly claimed for m,
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`a, and c.
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`It would have been obvious to one ofordinary skill in the art at the time of
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`invention to have selected the overlapping portion of the ranges disclosed by the
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`reference because selection of overlapping portion of ranges has been held to be a
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`prima facie case of obviousness.
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`/n re Malagari, 182 USPQ 549.
`
`Tamaki does disclose that a Mg-Sb-Bi-Te powders ([0059]) ([0050]) are sintered
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`in spark plasmasintering (SPS) method ([0062]) which is similar to the method as
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`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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`Tamaki disclosesit 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
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`([0036]-[0046]).
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`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
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`these conditions are implemented ([0013][0009)]).
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`

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`Application/Control Number: 17/354,935
`Art Unit: 1726
`
`Page 5
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`It would have been obvious to one ofordinary skill in the art at the time of filing to
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`modify the sintering temperature of Tamaki and modify the temperature to be 650°C -
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`750°C holding it between 5-15 mins as disclosed by Xin because the boundaries of the
`
`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
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`instantly claimed.
`
`Regarding claim 2, modified Tamaki discloses all of the claim limitations as set
`
`forth above.
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`In addition, Tamaki discloses that each of the crystal grains have La203
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`structure ( Abstract of Tamaki and see supplementary material of Kanno P3m1).
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`Regarding claims 3-6, modified Tamaki discloses all of the claim limitations as
`
`set forth above.
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`Regarding product and apparatus claims, when the structure recited in the
`
`reference is substantially identical to that of the claims, claimed properties or functions
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`are presumed to be inherent. The Courts have held thatit is well settled that where
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`there is a reason to believe that a functional characteristic would be inherent in the prior
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`art, the burden of proof then shifts to the applicant to provide objective evidence to the
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`contrary. See /n re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at
`
`1432 (Fed. Cir. 1997) (see MPEP § 2112.01, |.).
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`Modified Tamaki discloses the same formula as instantly claimed formed by
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`substantially the same method and therefore will also have the following properties:
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`e wherein the Mg-rich region is formed in boundaries of the crystal grains
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`

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`Application/Control Number: 17/354,935
`Art Unit: 1726
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`Page 6
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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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`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%
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`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
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`applied to claims 1-7 above andin further view of He (CN 108097458 A, Machine
`
`Translation).
`
`Regarding claim 8, modified Tamaki discloses all of the claim limitations as set
`
`forth above.
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`However, Tamaki does notdisclose a thermoelectric device but does disclose
`
`that the MgSballoy can be used an n-type thermoelectric element (Abstract).
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`He discloses a thermoelectric device that comprises a p-type element (804)
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`connected to an MgSb alloy n-type element (305) connected bya first electrode (303)
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`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) connectedto a third electrode (306) (See Fig. 1 or Fig. 2
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`[0016]-[0023)).
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`It would have been obvious to one ofordinary skill in the art at time offiling to
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`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
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`

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`Application/Control Number: 17/354,935
`Art Unit: 1726
`
`Page 7
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`electrodes as disclosed by He because doing so would allow one to transform thermal
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`energy to electrical energy.
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to DEVINA PILLAY whosetelephone number is (571)270-
`
`1180. The examiner can normally be reached Monday-Friday 9:30-6:00.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
`
`interview, applicant is encouraged to use the USPTO Automated Interview 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.
`
`Information regarding the status of published or unpublished applications may be
`
`obtained from Patent Center. Unpublished application information in Patent Center is
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`available to registered users. To file and manage patent submissions in Patent Center,
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`visit: https://patentcenter.uspto.gov. Visit https:/Awww.uspto.gov/patents/apply/patent-
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`https://www.uspto.gov/patents/docx for information aboutfiling in DOCX format. For
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`additional questions, contact the Electronic Business Center (EBC) at 866-217-9197
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`Representative, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`DEVINA PILLAY
`Primary Examiner
`
`

`

`Application/Control Number: 17/354,935
`Art Unit: 1726
`
`Page 8
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`Art Unit 1726
`
`/DEVINA PILLAY/
`Primary Examiner, Art Unit 1726
`
`