Ex Parte Ye

Patent Trial and Appeal Board

Mar 6, 2017

11843609 (P.T.A.B. Mar. 6, 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.
11/843,609 08/22/2007 Qi Laura Ye EL-4 5392
7590
John P. Wooldridge
1334 Ridgestone Ct.
Livermore, CA 94551
03/06/2017 EXAMINER
MOWLA, GOLAM
ART UNIT PAPER NUMBER
1758
MAIL DATE DELIVERY MODE
03/06/2017 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 QI LAURA YE
Appeal 2014-003862
Application 11/843,6091
Technology Center 1700
Before CATHERINE Q. TIMM, ROMULO H. DELMENDO, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
1 The Appellant states that the real party in interest is “ELORET
Corporation” (Appeal Brief filed August 28, 2013, hereinafter “Br.,” 2). In
addition, the Appellant’s Specification (hereinafter “Spec.”) indicates that
“[t]he invention . . . was made by a nongovernment employee, whose
contributions were done in the performance of work under a NASA
contract(s), and is subject to the provisions of Public Law 96-517 (35 U.S.C.
202)” and that “[t]he [United States] Government has certain rights in this
invention” (Spec. 2).
Appeal 2014-003862
Application 11/843,609
The Applicant (hereinafter the “Appellant”) appeals under 35 U.S.C.
§ 134(a) from a final decision of the Primary Examiner to reject claims 20,
21, and 29—33.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
BACKGROUND
The subject matter on appeal relates to a thermoelectric nano wire
composite, which may be used in spacecraft and space station environments
(Spec. 20, 25). Representative claim 20 is reproduced from page 7 of the
Appeal Brief (Claims Appendix; emphasis added), as follows:
20. A thermoelectric nanowire composite, comprising:
a first electrical contact;
a first p-type thermoelectric (TE) film;
a first bundle comprising a first plurality of p-type
nanowires that are discrete from said first p-type TE film and
are embedded in said first p-type TE film, wherein each of said
p-type nanowires of said first plurality of p-type nano wires is in
direct contact with p-type conductive material of said p-type TE
film, wherein each nanowire of said first plurality of p-type
nanowires is aligned to be about parallel with each other
nano wire of said first plurality of p-type nanowires, wherein
said first bundle comprises a first bundle end one and a first
bundle end two, wherein said first bundle end one and said first
bundle end two are at opposite ends of said p-type nanowires,
wherein said first bundle end one is in direct contact with said
first electrical contact.
REJECTIONS ON APPEAL
The Examiner rejected the claims as follows:
I. Claims 20, 21, 29, and 30 under 35 U.S.C. § 102(e) (pre-
2 Br. 2; Final Office Action mailed July 27, 2012, hereinafter “Final Act.,”
2—12; Examiner’s Answer mailed December 19, 2013, hereinafter “Ans.,”
2-14.
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Appeal 2014-003862
Application 11/843,609
AIA) as anticipated by Chen et al.3 (hereinafter “Chen”);
and
II. Claims 31—33 under 35 U.S.C. § 103(a) (pre-AIA) as
unpatentable over Chen in view of Cauchy et al.4
(Final Act. 2—12; Ans. 2—14.)
DISCUSSION
The Appellant does not argue the rejections separately (Br. 5—6). Nor
does the Appellant present any argument in support of the separate
patentability of any particular claim {id.). Accordingly, both rejections rise
or fall with the rejection of claim 20, which we select as a representative
claim pursuant to 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Chen describes every limitation recited in
claim 20 (Final Act. 2-A\ Ans. 2-4) (citing Chen Figs. 8 and 21 and H 31,
56, and 71). The Appellant’s sole argument on appeal5 is that “there is no
discussion [in Chen] that one end of the nanowires is in direct contact with
an electrode and the other end is in contact with another electrode” (Br. 5).
We find no merit in the Appellant’s argument. The factual findings
are well-supported and the reasoning is well-stated by the Examiner on
pages 12—14 of the Answer. In particular, Chen’s Figure 12 discloses
nanocomposite modules 62 and 64 with legs that are connected through
electrically conductive bridges to adjacent legs in a cascading fashion (|| 35,
3 US 2006/0102224 Al, published May 18, 2006.
4 US 6,103,967, issued August 15, 2000.
5 Other arguments that the Appellant could have made in a timely manner
have been waived. 37 C.F.R. § 41.37(c)(l)(iv) (“Except as provided for in
§§ 41.41, 41,47 and 41.52, [which allow for new arguments upon a showing
of good cause] any arguments or authorities not included in the appeal brief
will be refused consideration for purposes of the present appeal.”).
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Appeal 2014-003862
Application 11/843,609
71). A person having ordinary skill in the art would have drawn a
reasonable inference from Chen’s explicit teachings that the nano wire ends
in modules 62 and 64 would necessarily be in direct contact with the
electrical conductive bridges or contacts, as illustrated in the Examiner’s
annotated figure on page 13 of the Answer.
Therefore, we uphold the Examiner’s rejections.
SUMMARY
The Examiner’s final decision to reject claims 20, 21, and 29—33 is
affirmed.
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
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