10836643 (B.P.A.I. Feb. 24, 2012)

Ex Parte Chen et al

Board of Patent Appeals and InterferencesFeb 24, 2012

10836643 (B.P.A.I. Feb. 24, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/836,643 04/30/2004 Lidong Chen GP-304598 8721 60770 7590 02/24/2012 General Motors Corporation c/o REISING ETHINGTON P.C. P.O. BOX 4390 TROY, MI 48099-4390 EXAMINER MOWLA, GOLAM ART UNIT PAPER NUMBER 1723 MAIL DATE DELIVERY MODE 02/24/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte LIDONG CHEN, XUN SHI, JIHUI YANG, and GREGORY P. MEISNER ____________ Appeal 2010-002298 Application 10/836,643 Technology Center 1700 ____________ Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and BEVERLY A. FRANKLIN, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134 from the Examiner's rejection of claims 1-8. We have jurisdiction under 35 U.S.C. Â§ 6. STATEMENT OF THE CASE Claim 1 is representative of the subject matter on appeal and is set forth below: 1. A method of increasing a thermoelectric figure of merit of a thermoelectric material, comprising: Appeal 2010-002298 Application 10/836,643 2 providing at least a first metal element containing precursor material and a second metal element containing precursor material, each precursor material being in powder form and together comprising elements of a thermoelectric material; mixing the precursor materials with fullerene to form a mixture; reacting the mixture under an inert gas atmosphere to form the thermoelectric material in crystalline form; and sintering the reacted mixture to form fullerene clusters dispersed between crystal grains of the thermoelectric material. The prior art relied upon by the Examiner in rejecting the claims on appeal is: Imanishi et al. 5,912,429 Jun. 15, 1999 Kusakabe et al. 5,929,351 Jul. 27, 1999 Heremans et al. US 2004/0187905 A1 Sep. 30, 2004 Xia et. al., Thermoelectric properties of semimetallic (Zr, Hf)CoSb half- Heusler phases, 88 J. Appl. Physics 1952-55 (2000). THE REJECTIONS 1. Claims 1-4 and 6 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Imanishi in view of Heremans. 2. Claim 5 is rejected under 35 U.S.C. Â§103(a) as being unpatentable over Imanishi in view of Heremans as applied to claim 1 above, and further in view of Xia. Appeal 2010-002298 Application 10/836,643 3 3. Claims 7 and 8 are rejected under 35 U.S.C. Â§103(a) as being unpatentable over Imanishi in view of Heremans as applied to claim 1 above, and further in view of Kusakabe. ISSUE Did the Examiner err in determining that Heremans teaches that fullerene determines conductivity type of a thermoelectric material? We answer this question in the affirmative and REVERSE. ANALYSIS (with Findings of Fact and Principles of Law) On page 4 of the Answer, the Examiner states: It would have been obvious to one of ordinary skill in the art at the time of the invention to have utilized the fullerene powder of Heremans as the additive of Imanishi and mix it with cobalt-antimony thermoelectric material of Imanishi, because doing so determines the conductivity type of the cobalt-antimony thermoelectric material as desired by Imanishi, and also to enhance the overall thermoelectric properties as shown by Heremans. However, we agree with Appellants that there is insufficient basis to combine Imanishi in view of Heremans because Hereman does not teach that fullerene determines conductivity type as explained by Appellants on page 11 of the Brief, second full paragraph, and in the paragraph bridging pages 4-5 of the Reply Brief. Hence, the Examinerâ€™s reason for combining Heremans with Imanishi is unsupported by the facts. Appeal 2010-002298 Application 10/836,643 4 In view of the above, we reverse Rejection 1. Because the additional references applied in Rejections 2 and 3 do not cure the deficiencies of Imanishi in view of Heremans, we also reverse these rejections. CONCLUSIONS OF LAW AND DECISION Each rejection is reversed. REVERSED cam