Ex Parte Fornara et al

Patent Trial and Appeal Board

Sep 25, 2018

13659622 (P.T.A.B. Sep. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/659,622 10/24/2012
102473 7590 09/27/2018
Slater Matsil, LLP/ST- EP
17950 Preston Road, Suite 1000
Dallas, TX 75252
FIRST NAMED INVENTOR
Pascal Fornara
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
ST-l l-R0-0581US01 5174
EXAMINER
MEKHLIN, ELIS
ART UNIT PAPER NUMBER
1721
NOTIFICATION DATE DELIVERY MODE
09/27/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@slatermatsil.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PASCAL FORNARA and
CHRISTIAN RIVERO
Appeal2017-001928
Application 13/659,622
Technology Center 1700
Before RAEL YNN P. GUEST, N. WHITNEY WILSON, and
MICHELLE N. ANKENBRAND, Administrative Patent Judges.
GUEST, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 6-15 and 21-32. See generally Examiner's Final
Office Action, dated November 5, 2015 ("Final Act."); Appellants' Appeal
Brief, dated March 16, 2016 ("App. Br."); Examiner's Answer, dated
September 21, 2016 ("Ans."); Appellants' Reply Brief, dated November 18,
2016 ("Reply Br."). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 The Applicant is identified as STMicroelectronics (Rousset) SAS of
Rousset, France.
Appeal2017-001928
Application 13/659,622
Appellants' invention is related to a communication device that
contains two thermoelectric generators that are thermally coupled within one
integrated circuit. Specification ("Spec.") ,r 2. The communication device
contains two devices wherein the first device has a first thermoelectric
generator, a first signal generator coupled to the first thermoelectric
generator, and a power supply coupled to the first thermoelectric generator,
and the second device has a second thermoelectric generator thermally
coupled with the first thermoelectric generator, a delivery component
configured to deliver an electrical information cue, and a second signal
generator coupled to a delivery component. Spec. ,r 5. The system works by
having an electrical signal in the first thermoelectric generator create a
thermal gradient, which is then used by the second thermoelectric generator
to create an electrical signal, all within the same integrated circuit. Spec.
,r 4.
Independent claim 6 is exemplary of the subject matter on appeal and
is reproduced below:
6. A communication system, comprising:
a first device comprising
a first thermoelectric generator, a first signal generator
coupled to the first thermoelectric generator, and a power
supply coupled to the first thermoelectric generator,
wherein the first thermoelectric generator is electrically
powered as a function of the first signal so as to generate
a first thermal gradient in the first thermoelectric
generator, the magnitude of the first thermal gradient
being substantially proportional to the voltage of the first
signal; and
a second device comprising
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a second thermoelectric generator thermally coupled with
the first thermoelectric generator, a delivery component
configured to deliver an electrical information cue in
response to a second thermal gradient generated in the
second thermoelectric generator based on the first
thermal gradient, and a second signal generator coupled
to the delivery component and configured to generate a
second signal that is substantially proportional to the first
signal as a function of the electrical information cue.
App. Br. 24 (Claim App'x).
The Examiner maintains the following rejections:
1. Claims 6-15 and 21-32 under 35 U.S.C. § 112(b), as indefinite, for
lack of antecedent basis and for lack of ascertainable scope;
2. Claims 6, 7, 10, 13, 21-24, 27, and 30 under pre-AIA 35 U.S.C.
§ 102(b) as being anticipated by Seo2;
3. Claims 8, 12, and 25 under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Seo, in view of McKinnell 3;
4. Claims 9 and 26 under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Seo, in view of Xi4 and Liang5;
5. Claims 11, 28, and 29 under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Seo, in view of McKinnell, Xi, and Liang;
6. Claims 14 and 31 under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Seo in view of Lee 6;
2 Seo, US 2005/0121064 Al, June 9, 2005.
3 McKinnell et al., US 2004/0145049 Al, July 29, 2004.
4 Xi et al., US 6,127,619, October 3, 2000.
5 Liang et al., US 2009/0293928, December 3, 2009.
6 Lee, US 2007/0095381 Al, May 3, 2007.
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Application 13/659,622
7. Claims 15 and 32 under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Seo, in view of Horisaki 7 and Hou. 8
II. DISCUSSION
A. Indefiniteness rejections
Independent claims 6, 21, and 22, and the claims that depend
therefrom, are rejected under 35 U.S.C. § 112(b) for insufficient antecedent
basis. Ans. 3. Appellants do not argue the rejection and simply state that
they are amenable to an Examiner's amendment to cure the alleged
deficiencies. App. Br. 22. Accordingly, we summarily sustain the
Examiner's rejection on this basis.
Independent claims 6, 21, and 22, and the claims that depend
therefrom, are further rejected under 35 U.S.C. § 112(b) for the use of the
phrase "the magnitude of the first thermal gradient being substantially
proportional to the voltage of the first signal." Final Act. 5; Ans. 4. The
Examiner determined that "it's unclear how the thermal gradient is
determined to be substantially proportional to the voltage of the first signal
or how much variation is permitted between the two." Id. Indeed, the
Examiner asks "[ d]oes this mean any thermal gradient is substantially
proportional to the voltage of the first signal because the voltage of the first
signal causes its existence?" Id. The Examiner's question suggests that the
Examiner's concern is with the scope of the "magnitude" of the first thermal
gradient being "substantially proportional" to the voltage, and not the
concept of the phrase "substantially proportional" itself. See also Ans. 30
7 Horisaki, US 2010/0239049 Al, September 23, 2010.
8 Hou, US 2010/0259327 Al, October 14, 2010.
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("[T]he proportionality requirement itself is unclear as to how the
determination of proportionality is made between the magnitude of the
thermal gradient and the voltage of the first signal.").
Appellants argue that they are not required to specify a particular
degree of proportionality as the Examiner proposes and that the term
"substantially" has been recognized and accepted as a commonly used term
in patent claims to avoid a strict numerical boundary to the specified
parameter (App. Br. 20-21 (citing, e.g., Anchor Wall Sys., Inc. v. Rockwood
Retaining Walls, Inc., 340 F.3d 1298, 1311 (Fed. Cir. 2003))) and that the
term "proportional" is further commonly understood. Reply Br. 11-12. In
other words, the Appellants are arguing that the term "substantially
proportional" is a commonly used term, which does not sufficiently address
our understanding of the Examiner's rejection.
We agree with the Examiner that it is unclear what is meant by a
substantially proportionate magnitude of the thermal gradient.
There is no guidance in the Specification as to what "substantially
proportional" or "magnitude" means as none of these terms are defined,
described, or even mentioned in the Specification. Indeed, the scope of this
language comes into question, as discussed below, because Appellants have
argued that the claims encompass an arrangement in which a change in
voltage causes the signal provided to the first thermoelectric generator to be
in the form of a first logic state "1" or, if no change in voltage is present, a
second logic state "O," and that the first electric generator will be powered or
not powered, respectively, based on this signal. See Appellants' Response to
Office Action 9-11, dated September 30, 2015 (citing Spec. ,r,r 41--42 along
with Spec. ,r 31, which appears to describe literal support for a variable
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Application 13/659,622
signal rather than simply an on/off signal as discussed). Indeed, this
configuration is particularly useful as a means for wirelessly communicating
data, which is the purpose of the invention. See Spec. ,r,r 3--4. In this
arrangement, although the Specification suggests there is a voltage
magnitude, in the sense that there is either a change in voltage or not, and
although there is some magnitude of temperature change in response to the
"O" or "1" (on/off) signal, the Specification does not explain how the
magnitude of the thermal gradient can be proportional to the voltage, when
the signal responses are only "O" or "1," which merely produces an on/off
signal. Without such guidance, we cannot ascertain the meets and bounds of
the "magnitude," to the extent any exist, being "proportional," substantially
or otherwise. Appellants do not disclaim the arrangement discussed in
paragraphs 41--42 of the Specification as falling outside of the scope of the
invention. Yet, we cannot reconcile the claim language where it is in
conflict with the scope of the invention, which Appellants have asserted is
their invention. Thus, we sustain the Examiner's rejection on this basis.
B. Anticipation rejections based on Seo
With respect to the anticipation rejection, Appellants direct their
arguments to independent claims 6, 21, and 22, as a group, for which we
select independent claim 6 as representative. App. Br. 8-15. Appellants
expressly state that claims 7, 10, 13, 23, 24, 27, and 30 stand or fall with the
independent claims from which they depend. Id. at 15. Accordingly, we
limit our discussion to claim 6.
Appellants argue that Seo does not teach a first thermoelectric
generator and a second thermoelectric generator. Id. at 8-11. Appellants
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Application 13/659,622
argue that a thermoelectric generator has a specific meaning to a person of
skill in the art that is a device that converts heat to electricity or a device that
converts electricity to heat. Id. at 8. Appellants state that cooling module
210 of Seo, which the Examiner asserts is a first thermoelectric generator
(thermoelectric semiconductor 212), merely, upon an electric signal, absorbs
battery heat and transfers it to the electric generation module 220, but does
not convert energy to heat. App. Br. 11.
The Examiner understands a thermoelectric generator to be "an
apparatus directed to the conversion of heat directly to electricity that can
also be operated in Peltier mode to have a current applied to it to affect a
temperature change." Ans. 22. According to the Examiner, there need not
be conversion of electricity to heat, but rather any thermal gradient formed
in response to applied electricity, i.e., a current, voltage, or electrical signal.
According to the Examiner, cooling module 210 is a thermoelectric
generator (thermoelectric semiconductor 212) as recited in the claims
because it constructed to have a Peltier effect, exactly the same effect that
Appellants' Specification teaches. Id. at 23-24.
We agree with the Examiner that Seo teaches a first and second
thermoelectric generator as recited in the claims.
The claim does not require that a "thermoelectric generator" convert
electricity to heat, or vice versa. Rather, claim 6 recites that a thermal
gradient is "generate[d]." We agree with the Examiner that a thermoelectric
generator need not do more than generate or create a thermal gradient in
response to an electrical signal or, alternatively, generate or create an
electrical signal in response to a thermal gradient. This meaning of the
terms "thermoelectric generator" and "generate" is consistent with the
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Specification, which states that "[t]he method includes generating a first
signal within the first device, and electrically powering the first
thermoelectric generator as a function of the first signal so as to create a
first thermal gradient in the first generator." Spec. ,r 4 ( emphasis added).
Moreover, the Specification specifically identifies "[t]he first
generator GENl is based on the Peltier effect, which is the inverse effect of
the Seebeck effect, while the second generator GEN2 is based on the
Seebeck effect." Id. ,r 48; see also id. ,r 15 ("it is proposed to insert a
thermoelectric generator into each device, and to use for one, the Peltier
effect and for the other, the Seebeck effect, to allow the wireless
transmission of information between the two devices."). These "effects" are
the identical effects that Seo teaches thermoelectric semiconductor 212 and
electricity generation module 220 use, respectively. See Seo ,r,r 25 ("The
thermoelectric semiconductor 212 is constructed to have a Peltier effect in
which heat is absorbed into the thermoelectric semiconductor 212 if current
is applied to the thermoelectric semiconductor 212."), 27 ("The electricity
generation module 220 includes a thermoelectric semiconductor representing
a Seebeck effect in which the electromotive force is generated by creating a
temperature difference at a junction part between two mutually different
semiconductors."). In other words, we understand Seo to teach an electrical
signal used to activate the Peltier effect in thermoelectric semiconductor 212
to create a temperature gradient and that the heat created by thermoelectric
semiconductor 212 is then transferred to module 220 which uses the Seebeck
effect to create an electrical signal. Therefore, we agree with the Examiner
that Seo teaches two separate devices that read on the thermoelectric
generators recited in the claims.
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Application 13/659,622
Appellants further contend that the magnitude of the thermal gradient
is not substantially proportional to the voltage of the first signal. App. Br.
13. Rather, according to Appellants, the magnitude of first thermal gradient
has no relationship to the voltage of any signal, including the control signal
that is sent from the control unit and is solely dependent on the magnitude of
the battery heat that is available for absorption. Id. at 13-14.
The Examiner finds that Seo teaches applying DC power according to
a first signal from a control unit as the controlling factor to activate the
thermal gradient in the thermoelectric semiconductor 212, and that without
the DC power activation, there is no thermal gradient in the thermoelectric
semiconductor 212. Ans. 26-27. In other words, the Examiner finds that
the absence of a thermal gradient when there is no electrical signal and the
presence of a thermal gradient of any magnitude when there is a signal is a
"substantially proportional" response within the Examiner's broad
interpretation of the claim. Id. at 27-28.
Appellants argue that the mere existence of a thermal gradient or the
lack of a gradient cannot meet the claim limitation that the magnitude of the
thermal gradient is substantially proportional to the applied voltage because
it defies the "common understanding" of the claims, particularly because the
magnitude of the thermal gradient in Seo is dependent upon the heat the
battery generates and is not dependent upon the magnitude of the voltage.
App. Br. 14.
We do not find Appellants' arguments persuasive of error by the
Examiner. Initially, the claims do not recite the voltage having a magnitude,
only that the thermal gradient has a magnitude that is proportional to the
voltage. Moreover, as discussed above, we agree with the Examiner that the
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Application 13/659,622
claims must be construed to encompass an embodiment having the thermal
gradient activated or not activated, respectively, by merely a "1" or "O"
(on/off) electrical signal because Appellants have asserted that such an
embodiment, as described in the Specification, falls within the scope of the
claims. See Appellants' Response to Office Action 9-11, dated September
30, 2015 (citing Spec. ,r,r 41--42).
Accordingly, we agree with the Examiner that a "O" or off signal
creating no thermal gradient while a "1" or on signal creating a thermal
gradient meets a broad interpretation of the phrase "the magnitude of the
first thermal gradient being substantially proportional to the voltage of the
first signal" as recited in claim 6.
Thus, we sustain the Examiner's anticipation rejection.
C. Obviousness rejections based on Seo in view of additional prior art
Appellants make no substantial arguments with respect to the
obviousness rejections of claims 8, 9, 12, 14, 15, 25, 26, 31, and 32, over the
arguments discussed above based on the Examiner's findings with respect to
the teachings of Seo. However, Appellants present separate substantive
argument with respect to claims 11, 28, and 29, as a group (App. Br. 15-20),
for which we select claim 11 as representative.
Claim 11 depends directly from claim 10, which depends from claim
6, and further recites
the first thermoelectric generator comprises the substrate and
the parallel isolating regions and a first set of thermocouples
connected electrically in series and connected thermally in
parallel, the said first set of thermocouples comprising above
each isolating region at least one pair of semiconducting
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Application 13/659,622
regions shrouded in an isolating material having respectively
two opposite types of conductivity.
App. Br. 25 (Claim App'x). Figure 9 of the Specification illustrates the
structure recited in the claims.
FIG.9
RSNB·l R$P8·l RSN82 RSP82 ENS!
Figure 9 depicts an embodiment in which a first thermoelectric
generator (GEN2) comprises a substrate (SB), parallel isolating regions
(RIS), and first thermocouples N (RSN)/P (RSP) and a second
thermoelectric generator (GENl) having "above each isolating region [RIS]"
a pair of semiconducting regions (N (RSNB 1 )/P (RSPB 1 ), N (RSNB2)/P
(RSPB2), etc. (generically referred to as RSNBi/RSPBi)) shrouded in an
isolating material ENR. Spec. ,r,r 26, 76-77 (referring back to the discussion
of Figs. 6, 8 respectively at ,r,r 60-63, 72-73). Appellants contend that Seo
alone or in combination with Xi and McKinnell does not teach the specific
structural requirements of claim 11, in particular teaching a set of
thermocouples of one thermoelectric generator above each isolating region
of a second thermoelectric generator. App. Br. 16.
The Examiner relies on Seo for the general arrangement of a first
thermoelectric generator provided over a second thermoelectric generator, as
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Application 13/659,622
opposed to a side-by-side or other arrangement, as well as the generators
being thermally coupled. Final Act. 7-8. The Examiner relies on
McKinnell to teach the specific structure of the second thermoelectric
generator (wherein substrate 130 forms isolating regions between
thermocouples 152/154). Id. at 18-19. The Examiner relies on Xi as
teaching the specific structure of the fist thermoelectric generator (with a set
of thermocouples 14/15 shrouded in isolating material 13). Id. at 19.
Finally, the Examiner relies on Liang as teaching providing an isolating
layer on a substrate as an effective substrate for thermoelectric devices.
Ans. 18.
Although Appellants do not address the Examiner's application of
Liang in forming a rejection, we agree with the Appellants that the Examiner
has not explained how the combination of references would have led the
skilled artisan to necessarily place a set of thermocouples of the first
thermoelectric generator above each isolating region separating
thermocouples of the second thermoelectric generator. Indeed, when
combining Xi's structure so as to be disposed over the structure of
McKinnell, as the structure of Seo suggests, there is no suggestion of placing
a pair of thermocouples of Xi so that they are disposed over each of the
isolating regions between the thermocouples of McKinnell. An overlay of
an isolating region over the substrate McKinnell, as Liang teaches, does not
provide this missing structural teaching. Therefore, we find insufficient
evidence or reasoning to determine that the prior art teaches or suggests the
precise structure recited in claim 11. Accordingly, we do not sustain the
Examiner's rejection of claims 11, 28, and 29 under 35 U.S.C. § 103 as
unpatentable over Seo, McKinnell, Xi, and Liang.
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Application 13/659,622
III. CONCLUSION
On the record before us and for the reasons discussed above, we
sustain the following rejections:
Claims 6-15 and 21-32 under 35 U.S.C. § 112(b), as indefinite, for
lack of antecedent basis and for lack of ascertainable scope;
Claims 6, 7, 10, 13, 21-24, 27, and 30 under pre-AIA 35 U.S.C.
§ 102(b) as being anticipated by Seo;
Claims 8, 12, and 25 under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Seo, in view of McKinnell;
Claims 9 and 26 under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Seo, in view of Xi and Liang;
Claims 14 and 31 under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Seo in view of Lee;
Claims 15 and 32 under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Seo, in view of Horisaki and Hou.
We do not sustain the following rejection:
Claims 11, 28, and 29 under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Seo, in view of McKinnell, Xi, and Liang.
Accordingly, we affirm the Examiner's decision to reject all the
claims on appeal.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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