Ex Parte DowbenDownload PDFPatent Trial and Appeal BoardMay 18, 201713604927 (P.T.A.B. May. 18, 2017) Copy Citation 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. 13/604,927 09/06/2012 PETER DOWBEN QNTM-0014-UT1 3900 80308 7590 05/18/2017 The Kelber Law Group 1875 Eye Street, N.W., Fifth Floor Washington, DC 20006 EXAMINER HORTON, DUJUAN A ART UNIT PAPER NUMBER 1754 MAIL DATE DELIVERY MODE 05/18/2017 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 PETER DOWBEN Appeal 2015-007364 Application 13/604,927 Technology Center 1700 Before JEFFREY W. ABRAHAM, JULIA HEANEY, and JEFFREY R. SNAY, Administrative Patent Judges. HEANEY, Administrative Patent Judge. DECISION ON APPEAL1 Appellant2 requests review pursuant to 35 U.S.C. § 134(a) of a decision of the Examiner rejecting claims 1—13 of Application 13/604,927. Final Act. 2—8. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in- part. 1 We refer to the Specification (“Spec.”) filed Sept. 6, 2012; Final Office Action (“Final Act.”) dated Aug. 13, 2014; Appellant’s Appeal Brief (“App. Br.”) dated Jan. 12, 2015; Examiner’s Answer (“Ans.”) dated June 15, 2015; and Appellant’s Reply Brief (“Reply Br.”) dated August 5, 2015. 2 Appellant identifies the real party in interest as Quantum Devices, LLC. App. Br. 2. Appeal 2015-007364 Application 13/604,927 BACKGROUND The subject matter on appeal relates to a thermoelectric converter which converts a temperature differential into electricity pursuant to the Seebeck effect. Spec. H 2, 10. By placing an «-type and p-type semiconductor in electrical contact, with one face of the two materials exposed to an elevated temperature and a face of the other material exposed to a lower temperature, the carriers in the semiconductors migrate, generating an electrical current. App. Br. 8; Spec. 110. Appellant asserts to be the first to recognize that “generation of electric power using a temperature differential can be achieved more effectively using the powerful material of boron carbide.” App. Br. 9. Claim 1, reproduced below, is illustrative of the subject matter on appeal: 1. A thermoelectric converter element, which element generates electricity when a first surface of said element is exposed to a first set of temperature conditions, and a second surface of said element is exposed to a second set of temperature conditions; wherein said first and second set of temperature conditions are such that said first set of temperature conditions is warmer than said second set of temperature conditions; wherein said element comprises a layer of boron carbide n- type semiconductor and a layer ofp-type semiconductor; and wherein said layer of «-type semiconductor and said layer of p-type semiconductor are connected electrically in a circuit and wherein said thermoelectric converter element generates electricity while said first and second surfaces are exposed to said first set of temperature conditions and said second set of temperature conditions, respectively. App. Br. 19 (Claims Appx). 2 Appeal 2015-007364 Application 13/604,927 REFERENCES The Examiner relied upon the following prior art references in rejecting the claims on appeal: Van Der Beck et al. (Van Der Beck) Watanabe et al. (Watanabe) Dowben (Dowben) Olsen et al. (Olsen) Lashmore et al. (Lashmore) US 5,298,084 US 6,185,941 B1 US 6,025,611 US 2006/0032525 Al US 2009/0044848 Al Mar. 29, 1994 Feb. 13, 2001 Feb. 15,2000 Feb. 16, 2006 Feb. 19, 2009 THE REJECTIONS 1. Claims 1—3, 6, 7, 9, and 10 are rejected under 35 U.S.C. § 102(b) as anticipated by Olsen. 2. Claims 4, 5, and 8 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Olsen and Dowben. 3. Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Olsen and Lashmore. 4. Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Olsen and Van der Beck. 5. Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Olsen and Watanabe. 3 Appeal 2015-007364 Application 13/604,927 DISCUSSION § 102(b) Rejection Appellant argues that Olsen does not anticipate claim 13 because it does not disclose a thermoelectric converter element which “generates electricity” or comprises a layer of boron carbide /7-type semiconductor, as recited in claim 1. App. Br. 10—12. The Examiner finds that Olsen discloses in Figure 1 a thermoelectric device comprising p-type and /7-type semiconductors and capable of generating electricity. Ans. 9. Appellant does not dispute that finding, but argues that Olsen sets forth “the generalized idea of a converter” without teaching “what type of temperature gradient must be presented, how to effect the generation of electricity, or if any electricity is even generated.” Reply Br. 6. Thus, Appellant argues, Olsen is unclear as to what conductivities were achieved, or whether they were sufficient for thermoelectric conversion. Id. Appellant’s argument is not persuasive of reversible error. Olsen’s Figure 1 undisputedly shows a thermoelectric device comprising p-type and /7-type semiconductors which is capable of generating electricity, because it depicts current flowing from the device to a load resistance. The additional attributes of the thermoelectric device argued by Appellant, such as the type of temperature gradient required, are not required by claim 1. Further, Appellant has not pointed to anything in the Specification as evidence that those attributes would be understood as necessary in order to “generate 3 Appellant argues claims 1 and 9 as a group and does not argue for separate patentability of claims 2, 3, 6, and 7. Accordingly, we need only discuss the anticipation rejection with regard to claim 1. 4 Appeal 2015-007364 Application 13/604,927 electricity.” Accordingly, we are not persuaded that the Examiner’s finding that Olsen reads on claim 1 is unreasonable. With regard to the claim requirement of a boron carbide /7-type semiconductor, Appellant’s arguments focus on lack of a detailed teaching of such a semiconductor in Olsen. Specifically, Appellant argues that the Examiner’s reliance on Olsen 122 is improper because Olsen is “focused exclusively on the identification of new p-type boron carbide semiconductors” (App. Br. 11) and Olsen 122 “discloses no /?-type boron carbide semiconductor materials at all” {id. at 12). Appellant, however, also acknowledges that the following statement from Olsen 122 discloses a boron carbide «-type semiconductor: These experiments demonstrated success in depositing both n-type, and for the first time reported in the literature, p-type Sio.4Geo.2 Quantum well structures. In contrast to the literature, it was also possible to deposit n-type B4C and BqC films, (emphasis supplied). Reply Br. 4. Appellant argues that the above reference to «-type boron carbide films is not sufficiently detailed to allow one of ordinary skill in the art to recreate the conditions that resulted in those films. Id. at 5. A preponderance of the evidence supports the Examiner’s finding of anticipation by Olsen. It is not necessary that an anticipatory reference teach what the subject application teaches, but only that something disclosed in the reference reads on the claim, i.e., that all of the limitations in the claim be found in or fully met by the reference. Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772 (1984). Further, in determining whether a reference anticipates the subject matter recited in a claim, “it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” In rePreda, 401 F. 2d 825, 826 (CCPA 1968). Contrary to 5 Appeal 2015-007364 Application 13/604,927 Appellant’s arguments, a person of ordinary skill in the art would have reasonably inferred from Olsen 122’s disclosure that «-type boron carbide may also be used, as well as «-type silicon and silicon germanium layers. Appellant has not directed our attention to any persuasive reasoning or credible evidence to establish that the Examiner’s findings concerning Olsen’s disclosure are unreasonable. § 103(a) Rejections Claims 4, 5, and 8 On the other hand, a preponderance of the evidence supports Appellant’s position that the Examiner has not explained why a person of ordinary skill in the art would be led to dope Olsen’s «-type boron carbide material with nickel or the other elements recited in claims 5 and 8. App. Br. 12—14. The Examiner’s reasoning for combining Olsen and Dowben, i.e., the doped «-type boron carbide material of Dowben is suitable for the intended purpose in Olsen, would explain how Olsen’s «-type boron carbide material could be replaced with Dowben’s doped material, but does not explain what would lead a person of ordinary skill in the art to make that modification. Ans. 5—6. Further, in response to Appellant’s argument that there would have been no basis for a person of ordinary skill in the art to conclude that Dowben’s nickel-doped film would be useful in Olsen (App. Br. 13—14), the Examiner does not explain what the basis would have been. See Ans. 9-10. Accordingly, we cannot sustain the rejection of claims 4, 5, and 8 as unpatentable over the combination of Olsen and Dowben. 6 Appeal 2015-007364 Application 13/604,927 Claims 11, 12, and 13 Each of these claims depends from claim 9 and additionally describes that the temperature conditions arise from a submarine at sea (claim 11), a vessel in outer space (claim 12), or a refrigerated enclosure (claim 12). App. Br. 20-21 (Claims Appx). The focus of Appellant’s arguments against the rejection of each of these claims is that the secondary references teach away from a combination with Olsen. With regard to the rejection of claim 11, Appellant argues that Lashmore teaches the materials selected in Olsen are unsuited for use in Lashmore’s design and instead specifies selection of carbon nanotubes as the p-type material to use, which is inconsistent with Olsen. App. Br. 14—15, citing Lashmore | 8. The Examiner responds by noting that the materials described as unsuitable in Lashmore 1 8 also are not used in Olsen. Ans. 10. Further, Appellant’s argument relies on the position that Olsen does not disclose an «-type boron carbide semiconductor (Reply Br. 10—11), but as discussed above, we find that Olsen does disclose an «-type boron carbide semiconductor. Accordingly, we affirm the rejection of claim 11. With regard to the rejection of claim 12, Appellant argues that Van Der Beck specifies the use of a SiGe/GaP material for the electrical converter and a silicon based «-type semiconductor, such that neither Olsen nor Van Der Beck discloses use of an «-type boron carbide semiconductor. App. Br. 15—16. Thus, Appellant’s argument relies on the position that Olsen does not disclose an «-type boron carbide semiconductor, which we have rejected above. The Examiner merely relies on Van Der Beck for teaching use of thermoelectric converters in space vehicles, which Appellant 7 Appeal 2015-007364 Application 13/604,927 does not dispute. App. Br. 15. Accordingly, we affirm the rejection of claim 12. Similarly for claim 13, Appellant argues that neither Watanabe nor Olsen teaches the use of /7-type boron carbide semiconductors. App. Br. 16— 17. The Examiner does not rely on Watanabe as teaching an /7-type boron carbide semiconductor, however, and as discussed above, we find that Olsen does disclose an /7-type boron carbide semiconductor in its thermoelectric converter. The Examiner merely relies on Watanabe for teaching use of thermoelectric converters in refrigerated enclosures, which Appellant does not dispute. Reply Br. 11. Accordingly, we affirm the rejection of claim 13. SUMMARY We affirm the rejections of claims 1—3, 6, 7, 9, 10, 11, 12, and 13 for the reasons discussed above. We reverse the rejection of claims 4, 5, and 8 for the reasons discussed above. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED-IN-PART 8 Copy with citationCopy as parenthetical citation