Ex Parte Dowben

Patent Trial and Appeal Board

May 18, 2017

13604927 (P.T.A.B. May. 18, 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.
13/604,927 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.
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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.
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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
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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.
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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
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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
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