Ex Parte Prather et al

Patent Trial and Appeal Board

Sep 19, 2012

10930590 (P.T.A.B. Sep. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ZACHARY A. PRATHER, STEVEN E. REDER, and
MICHAEL J. BERMAN
____________________

Appeal 2011-000265
Application 10/930,590
Technology Center 1700
____________________

Before ROMULO H. DELMENDO, JEFFREY B. ROBERTSON, and
RAE LYNN P. GUEST, Administrative Patent Judges.

GUEST, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 15, 16, and 18 under 35 U.S.C. § 103(a) as
unpatentable over Johnson1 and Kucherov2 and claim 17 under 35 U.S.C. §

1 US Patent 6,278,049 B1, issued Aug. 21, 2001, to Johnson et al.

2 US Application Publication 2003/0033818 A1, published Feb. 20, 2003,
naming Kucherov et al. as inventors.
Appeal 2011-000265
Application 10/930,590

2
103(a) as unpatentable over Johnson, Kucherov and Mansuria3. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appellants’ invention relates to a device and method of converting
heat generated by a semiconductor device into electric power (Spec. 2:2-4).
Claim 15 is illustrative (indentations and bracketed numbers added for
clarity):
15. A thermoelectric generator device comprising:
a top layer [1];
a bottom layer [2];
a first electrical conductor, thermal insulator layer [3] in contact with
said top layer [1];
a second electrical conductor, thermal insulator layer [4] in contact
with said bottom layer [2]
wherein both the first and second electrical conductor, thermal
insulator layers [3,4] are disposed between said top and bottom layers
[1,2];
a p-type material [5] between the first and second electrical conductor,
thermal insulator layers [3,4];
an n-type material [6] between the first and second electrical
conductor, thermal insulator layers [3,4]; and
an electrical and thermal insulating layer [7] between the p-type
material [5] and the n-type material [6], wherein
a first end of said electrical and thermal insulating layer [7]
between the p-type material and the n-type material contacts the first

3 US Patent 5,032,897, issued Jul. 16, 1991, to Mansuria et al.
Appeal 2011-000265
Application 10/930,590

3
electrical conductor, thermal insulator layer [3] and does not contact
the top layer [1], and wherein
a second end of said electrical and thermal insulating layer [7]
between the p-type material and the n-type material contacts the
second electrical conductor, thermal insulator layer [4] as well as the
bottom layer [2], thereby providing an electrical separation within the
second electrical conductor, thermal insulator layer [4],
wherein each of said top and bottom layers [1,2] comprise an
electrical insulator, thermal conductor layer which is non-electrically
conductively contactable with a device, and
said thermoelectric generator device is configured to covert heat
generated by the device into electric power.
II. DISCUSSION
A. ISSUE ON APPEAL
The dispositive issue on appeal arising from the findings and
determinations of the Examiner and the contentions of Appellants is: does
the evidence support the Appellants’ argument that the Examiner erred in
concluding that a person of ordinary skill in the art would have arrived at a
structure having an electrical and thermal insulating layer [7] between the p-
type material and the n-type material with a first end that contacts a first
electrical conductor, thermal insulator layer [3] but not the top layer [1] and
a second end that contacts a second electrical conductor, thermal insulator
layer [4] and a bottom layer [2] in view of the cited prior art references? We
answer this question in the affirmative.
App
App

B.
therm
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and p-type
es an insu
titutes the
tion (Ans
res 7, 11a-
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(Kucherov
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ight (App.

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(Ans. 9).
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Johnson
g

Appeal 2011-000265
Application 10/930,590

6
We fail to see how the inclusion of insulating material along the entire
open space between the semiconductor legs 105/106, as taught by Johnson
along with the incorporation of the barrier layers disclosed in Kucherov,
would form a structure in which the insulating material would contact the
bottom layer 117 but not the top layer 100.
Kucherov only teaches adding the top and bottom barrier layers B1
and IB1 between the n-type and p-type material (105/106 of Johnson’s
Figure 17) and the top and bottom layers (100/117 of Johnson’s Figure 17).
Therefore, even including the barrier layers B1 and IB1 as taught by
Kucherov, when the insulating layer 11 is added in the entire open space
between semiconductor legs 105/106, it would necessarily contact the top
layer 100 in each open space to the right of legs 106 and to the left of legs
105 in the structure of Figure 17 of Johnson. Similarly, the added insulation
layer 11 would contact the bottom layer 117 in each open space to the left of
legs 106 and to the right of legs 105 in Figure 17 of Johnson.
The Examiner has not sufficiently explained why one of ordinary skill
in the art would have extended the barrier layers B1 to the open space
between the semiconductor material legs 105 and 106 of Johnson adjacent
the top layer 100, and similarly would not have extended barrier layer IB1 to
the open space adjacent the bottom layer 117, such that the added insulating
material 11 would contact barrier layers B1 and IB1 and bottom layer 117,
but not top layer 100. Indeed, Figure 4.12 of Kucherov also appears to show
similar open spaces between the n-type and p-type materials and adjacent the
top and bottom layers, which are devoid of barrier layers B1 and IB1.
The Examiner has not adequately explained how one of ordinary skill
in the art would have arrived at a structure in which an electrical and thermal
Appeal 2011-000265
Application 10/930,590

7
insulating layer [7] between the p-type material [5] and the n-type material
[6] of Johnson would have contacted the first and second electrical
conductor, thermal insulator layers [3, 4] and the bottom layer [2] but not the
top layer [1], as recited in claim 15. See In re Rouffet, 149 F.3d 1350, 1358
(Fed. Cir. 1998) (“hindsight” is inferred when the specific understanding or
principal within the knowledge of one of ordinary skill in the art leading to
the modification of the prior art in order to arrive at appellant's claimed
invention has not been explained).
The Examiner relies on the same rationale in rejecting each of the
claims, including separately rejected claim 17 (Ans. 4-8).
III. CONCLUSION
On the record before us and for the reasons discussed above, we
reverse the rejections maintained by the Examiner.

REVERSED