Ex Parte Chen

Patent Trial and Appeal Board

Aug 16, 2017

13312986 (P.T.A.B. Aug. 16, 2017)

United States Patent and Trademark Office
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.
13/312,986 12/06/2011 Yong Chen P02109US01 (19232.0158) 9599
121672 7590 08/18/2017
Ice Miller LLP/Purdue Research Foundation
One American Square, Suite 2900
Indianapolis, IN 46282
EXAMINER
TRAN, UYEN M
ART UNIT PAPER NUMBER
1757
NOTIFICATION DATE DELIVERY MODE
08/18/2017 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):
ipdocket @ icemiller. com
otcpatent @ prf. org
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YONG CHEN
Appeal 2016-008269
Application 13/312,986
Technology Center 1700
Before KAREN M. HASTINGS, JULIA HEANEY, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—20. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Appeal 2016-008269
Application 13/312,986
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. A thermoelectric device, comprising:
a topological insulating layer;
a first conducting layer configured to induce charge of a
first polarity on a first surface of the insulating layer; and
a second conducting layer configured to induce charge of
a second polarity on a second surface of the insulating layer, the
second polarity opposite the first polarity, and the first surface
opposite the second surface across a transversal axis,
wherein by induction of opposing charges on the first
surface and the second surface of the insulating layer spatially
separated surface excitons are formed between the first and the
second surfaces of the insulating layer, the spatially separated
surface excitons generate a counterflow electrical current when
a thermal gradient is provided across a longitudinal axis of the
insulating layer.
Appellant1 (App. Br. 10) requests review of the following rejections
from the Examiner’s Final Office Action:
I. Claims 1—5 and 13—15 rejected under 35 U.S.C. § 102(b) as
anticipated by Esser (US 2005/0161072 Al, published July 28, 2005).
II. Claims 1—20 rejected under 35 U.S.C. § 103(a) as unpatentable
over Esser and Venkatasubramanian (US 2006/0243317 Al, published
November 2, 2006).
1 The real party in interest is identified as the Purdue Research Foundation
having a present address of 1281 Win Hentschel Blvd., West Lafayette, IN
47096. App. Br. 4.
2
Appeal 2016-008269
Application 13/312,986
In addressing Rejection I, Appellant argues independent claims 1 and
13 together and does not present separate arguments addressing claims 2—5,
14, and 15. App. Br. 11, 12, 14. In addition, Appellant relies on the
arguments presented when discussing Rejection I to address the separate
rejection of claims 1—20 without further addressing or distinguishing the
additional secondary reference cited. Id. at 15. Accordingly, we select the
independent claim 1 as representative of the subject matter before us on
appeal. Claims 2—20 stand or fall with claim 1.
OPINION
The Prior Art Rejections
After review of the respective positions provided by Appellant and the
Examiner, we AFFIRM the Examiner’s rejection of representative claim 1
for the reasons presented by the Examiner. We add the following for
emphasis.
Independent claim 1 is directed to a thermoelectric device comprising
a topological insulating layer having first and second surfaces where each of
the surfaces comprise a conducting layer that induces charges of opposite
polarity on each of the first and second surfaces that form spatially separated
surface excitons between the first and the second surfaces to generate a
counterflow electrical current when a thermal gradient is provided across a
longitudinal axis of the insulating layer.
We refer to the Examiner’s Final Action for a statement of the
rejection. Final Act. 2-4.
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Appeal 2016-008269
Application 13/312,986
Appellant argues Esser’s current flow is not based on excitonic
condensates formed on the surfaces of the first and second conducting
portions 164, 166, 168, and 170, but rather Esser uses bulk conduction that
cannot be used to create surface conduction as claimed. App. Br. 12. Thus,
Appellant argues Esser does not describe spatially separated surface excitons
formed between a first and a second surface of an insulating layer, wherein
the spatially separated surface excitons generate a counterflow electrical
current. Id.
We are unpersuaded by these arguments for the reasons presented by
the Examiner. Ans. 12—15. The Examiner finds Esser describes a
thermoelectric device comprising a topological insulating layer
(semiconductor layer 168 made of bismuth telluride), a first conducting layer
152 and a second conducting layer 160. Final Act. 2-4; Ans. 12—13; Esser
Figure 2A, || 24, 25, 29, 30. That is, the Examiner finds Esser describes the
structure of the claimed thermoelectric device. Based on the structural
similarities of the devices, the Examiner finds the thermoelectric device
structure of Esser is capable of performing the functions of inducing charges
of different polarity in the surfaces of the insulating layer and forming
excitons between the surfaces of the insulating layer to generate a
counterflow electrical current when a thermal gradient is provided across a
longitudinal axis of the insulating layer as recited by the subject matter of
claim 1. Final Act. 3^4; Ans. 12—13.
A patent applicant is free to claim features of a device either
structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir.
1997); In re Swinehart, 439 F.2d 210, 212 (CCPA 1971). But, where the
Patent Office has a reason to believe that claimed and prior art devices are
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Appeal 2016-008269
Application 13/312,986
the same or substantially the same, or are produced by the same or
substantially the same processes, the Patent Office can require an applicant
to prove that the prior art device is not capable of performing the claimed
function. In re Best, 562 F.2d at 1255; Swinehart, 439 F.2d at 213.
While Appellant asserts Esser uses bulk conduction that cannot be
used to create surface conduction (App. Br. 12), Appellant has neither
directed us to any evidence nor provided an adequate explanation in support
of this assertion. Further, Appellant has preferred no evidence that the prior
art device is not capable of performing the claimed functions. Appellant, at
most, has provided mere attorney arguments and such arguments of counsel
cannot take the place of evidence. See In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984); In re Payne, 606 F.2d 303, 315 (CCPA 1979). Thus,
Appellant has not adequately distinguished the claimed thermoelectric
device from the thermoelectric device of Esser.
Appellant additionally argues the claimed invention uses an undoped
topological insulating layer (undoped bismuth telluride) while Esser
describes a doped bismuth telluride. App. Br. 13. According to Appellant,
the surface excitons of the claimed invention are made possible through the
use of the undoped topological insulating layer. App. Br. 13—14.
We find these arguments equally unavailing for the reasons presented
by the Examiner. Ans. 15. As explained by the Examiner, the Specification
provides no description of the topological insulating layer as being doped or
undoped. Id. Further, the Examiner has presented an evidentiary reference
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Appeal 2016-008269
Application 13/312,986
to Hor2 that demonstrates that a topological insulator can be doped. Ans. 15;
see generally Hor. Appellant’s arguments do not refute the points raised by
the Examiner.
Accordingly, we affirm the Examiner’s prior art rejections of claims
1—20 under 35 U.S.C. §§ 102(b) and 103(a) for the reasons presented by the
Examiner and given above.
DECISION
The Examiner’s prior art rejections under 35 U.S.C. §§ 102 (b) and
103(a) are affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
2 Hor et al. p-type Bi2Se3 for topological insulator and low-temperature
thermoelectric application. Princeton University. 2009.
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