Ex Parte Yang et al

Patent Trial and Appeal Board

Jun 20, 2013

11456887 (P.T.A.B. Jun. 20, 2013)

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.
11/456,887 07/12/2006 Jihui Yang GP-307838-RD-KAM 6292
60770 7590 06/20/2013
General Motors Corporation
c/o REISING ETHINGTON P.C.
P.O. BOX 4390
TROY, MI 48099-4390
EXAMINER
MERSHON, JAYNE L
ART UNIT PAPER NUMBER
1758
MAIL DATE DELIVERY MODE
06/20/2013 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 JIHUI YANG, WENQING ZHANG, LIDONG CHEN, and
GREGORY P. MEISNER
____________

Appeal 2012-002719
Application 11/456,887
Technology Center 1700
____________

Before CHUNG K. PAK, CHARLES F. WARREN, and
HUBERT C. LORIN, Administrative Patent Judges.

PAK, Administrative Patent Judge

DECISION ON APPEAL
The named inventors (hereinafter “Appellants”)1 appeal under
35 U.S.C. § 134 from the Examiner’s final rejection of claims 1 through 5
and 9 through 15, all of the claims pending in the above-identified
application. We have jurisdiction pursuant to 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The subject matter on appeal is directed to “filled skutterudites for
thermoelectric applications” and more particularly, “sodium-filled and

1 Appellants identify “the real part[y] in interest . . . [as] General Motors
Corporation and its wholly owned subsidiary, GM Global Technology
Operations LLC.” (See Appeal Brief filed June 20, 2011 (“App. Br.”) at 4.)
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potassium-filled skutterudites.” (Spec. 1, ¶ [0001].) The skutterudites are
minerals having a cubic crystal structure and “two interstitial voids in each
unit cell that are large enough to accommodate different atoms.” (Id. at
¶ [0002].) “When skutterudite type compositions are synthesized with
atoms that are introduced into such voids, the products are called filled-
skutterudites.” (Id.) Of the large number of filled-skutterudite compositions
disclosed in the Specification, the filled-skutterudite composition recited in
the claims on appeal is limited to “potassium-filled and sodium-filled cobalt
triantimonide filled skutterudites.” (Id. at 2-3, ¶¶ [0007] and [0010] and
claims 1 and 9 on appeal.) According to pages 2 and 3, paragraphs [0007]
and [0008], of the Specification:
These ternary-filled materials are suitably prepared as the
KyCo4Sb12 phase and the NayCo4Sb12 phase, where y indicates
the filling fraction of potassium and sodium, respectively, in the
CoSb3 cubic crystal structure. Thus, “y” can have values
greater than 0 and up to 1 depending on the proportion of the
interstitial voids that are filled in the CoSb3 structure.
. . . Based on these tools and understanding, a very high
FFL [i.e., Filling Fraction Limit,] for K-filled and Na-filled
ternary skutterudites was predicted even though these materials
had not been made.

These K-filled and Na-filled ternary skutterudites, including those having
two phase and two different filling fractions, can be made by the method
described at page 5, paragraphs [0018] to [0021] of the Specification, or the
known methods described by Yang et al. in the literatures published in 2002
and 2003 referred to at page 6, paragraph [0021] of the Specification.
Details of the appealed subject matter are recited in illustrative claims 1 and
9 reproduced below:
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1. Filled CoSb3 type skutterudites in which interstitial
voids in the cubic CoSb3 structure contain only potassium or
sodium atoms, and in which the filling fraction of potassium or
sodium atoms is 0.2 to 0.6.
9. A material composition comprising filled CoSb3 type
skutterudites in which a fraction of the interstitial voids in the
cubic CoSb3 structure contain filler atoms, the composition
including first and second CoSb3 type skutterudite phases, each
of the phases having a different fraction of their respective
interstitial voids filled with the filler atoms, wherein the filler
atoms are potassium and/or sodium.
(App. Br. 18 (Claims App’x)).
Appellants seek review of the following grounds of rejection set forth
by the Examiner in the Answer mailed September 21, 2011 (“Ans.”) as
follows:
1. Claims 1 through 5 and 9 through 15 under 35 U.S.C. § 103(a)
as unpatentable over the disclosure of U.S. Patent 6,369,314 B1 issued to
Nolas on April 9, 2002 (“Nolas”); and
2. Claims 1 through 5 under 35 U.S.C. § 103(a) as unpatentable
over the disclosure of published U.S. Application, US 2006/0016470 A1,
published to Yang et al. on January 26, 2006 (“Yang”). (Reply Brief filed
November 17, 2011 (“Reply Br.”) at 4; App. Br. 5; and Ans. 5-15.)

DISCUSSION
I. Claims 1-5 under 35 U.S.C. § 103(a) as unpatentable over the
disclosure of Nolas.
Appellants contend that one of ordinary skill in the art, armed with the
teachings of Nolas, would not have been led to the claimed K-filled or Na-
filled ternary skutterudites, much less any skutterudites containing only
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sodium or potassium atoms, because Nolas provides no guidance to select
CoSb3 skutterudites and sodium or potassium atoms from the large number
of skutterudites and atoms listed therein and teaches away from obtaining
the claimed K-filled or Na-filled ternary skutterudites. (Reply Br. 6-8, 11-
13, and 16-17.) Appellants also content that Nolas does not teach or suggest
employing the filling fraction of potassium or sodium atoms in CoSb3
skutterudites as recited in claims 1 through 5. (Id. at 9-11 and 14-19.)
Further, Appellants contend that the present application “identifies a
previously unknown problem that led to the claimed composition as a
potential solution.” (Reply Br. 12.) In so contending, Appellants seem to
argue that their reason for arriving at the claimed subject matter is different
from that discussed in Nolas. (Id.)
Thus, the dispositive question here is: Has the Examiner reversibly
erred in determining that one of ordinary skill in the art, armed with the
teachings of Nolas, would have been led to the claimed K-filled or Na-filled
ternary skutterudites within the meaning of 35 U.S.C. § 103(a)? On this
record, we answer this question in the negative.
Although Nolas, like Appellants, lists a number of binary compounds
(skutterudites) as having desirable thermoelectric properties, Nolas focuses
primarily on filled CoSb3 type skutterudites. (See Nolas, Figures 5-6 and 9-
14 and cols. 19-22, Tables IV-VII.) In particular, Nolas exemplifies
employing semiconductors having filled CoSb3 type skutterudites for
fabricating P-type and N-type thermoelectric elements. (See id. at col. 10, ll.
18-58 and col. 11, 46-67.) When N-type thermoelectric elements are
fabricated, Nolas discloses employing Co4EyA3xSb12-3x in which “E may be
selected from the group consisting of group I elements, such as Na, group II
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elements, such as barium (Ba), lanthanides, such as La, Ce or Ytterbium
(Yb), actinides, such as thorium (Th) or a combination thereof” and A may
be an exemplified ingredient, such as tin (Sn), indium (In), or cadmium
(Cd), or may not be present (x=0). (See id. at col. 10, ll. 45-58 (emphasis
added).) The group I elements taught by Nolas not only expressly include
Na (sodium), but are also known to include K (potassium).
Given the above teachings, we concur with the Examiner that one of
ordinary skill in the art reading the disclosure of Nolas would have been led
to produce, inter alia, potassium or sodium atoms filled CoSb3 type
skutterudites, with a reasonable expectation of successfully using it for
forming N-type thermoelectric elements. (Id.) See, e.g., Merck & Co., Inc.
v. Biocraft Labs, 874 F.2d 804, 808 (Fed. Cir. 1989) (the fact that a
reference “discloses a multitude of effective combinations does not render
any particular formulation less obvious.”); In re Susi, 440 F.2d 442, 445
(CCPA 1971) (obviousness rejection affirmed where the disclosure of the
prior art was “huge, but it undeniably include[d] at least some of the
compounds recited in appellant's generic claims and [was] of a class of
chemicals to be used for the same purpose as appellant’s additives”).
Notwithstanding Appellants’ arguments to the contrary at pages 16
and 17 of the Reply Brief, Nolas does not teach away from forming
potassium or sodium atoms filled CoSb3 type skutterudites. Although Nolas
exemplifies La filled CoSb3 type skutterudites and prefers using two or
possibly three different filling atoms as argued by Appellants, such
preference does not negate or discourage one of ordinary skill in the art from
following Nolas’ disclosure relating to the employment of sodium or
potassium atoms as the sole filling atoms for CoSb3 type skutterudites in
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forming N-type thermoelectric elements. Syntex (U.S.A.) LLC v. Apotex,
Inc., 407 F.3d 1371, 1379-80 (Fed. Cir. 2005) (“A statement that a particular
combination is not a preferred embodiment does not teach away absent clear
discouragement of that combination.”); In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004) (explaining “[t]he prior art’s mere disclosure of more than
one alternative does not constitute a teaching away from any of these
alternatives because such disclosure does not criticize, discredit, or
otherwise discourage the solution claimed”); see also Merck & Co. v.
Biocraft Labs., Inc., 874 F.2d at 807 (quoting In re Lamberti, 545 F.2d 747,
750 (CCPA 1976)(“[T]he fact that a specific [embodiment] is taught to be
preferred is not controlling, since all disclosures of the prior art, including
unpreferred embodiments, must be considered.”); In re Fracalossi, 681 F.2d
792, 794 n.1 (CCPA 1982) (A prior art reference’s disclosure is not limited
to its examples.).
Appellants’ reliance on Nolas’ Table 2 at page 16 of the Reply Brief
also supports, not negates, obviousness of employing sodium or potassium
atoms as the filling atoms for CoSb3 type skutterudites. According to Nolas,
Na (sodium) and K (potassium) are two of the fourteen atoms listed in Table
2 as being useful for filling skutterudite crystal lattice structures and are said
to have sizes appropriate for void subcells of skutterudite crystal lattice
structures (sizes similar to or little bigger than those of La according to
Table 2). (See Nolas, col. 12, l. 58 to col. 13, l. 24 and Table 2.)
As to the filling fraction of sodium or potassium atoms recited in
claims 1 through 5, Appellants acknowledge that Nolas discloses that y is
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greater than 0 and less than 1.2 (Reply Br. 10.) In other words, Appellants
do not dispute the Examiner’s finding that the filling fraction of the filling
atoms, such as sodium or potassium atoms, taught by Nolas is in the range of
greater than 0 and less than 1, which overlaps with the filling fraction of
sodium or potassium atoms recited in claims 1 through 5. (Compare Ans. 7
with Reply Br. 10.) These overlapping filling fractions of potassium or
sodium atoms in the CoSb3 type skutterudites recited in the claims and
taught by Nolas for the same thermoelectric application purpose are
sufficient to establish a prima facie case of obviousness within the meaning
of 35 U.S.C. § 103. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)
(“A prima facie case of obviousness typically exists when the ranges of a
claimed composition overlap the ranges disclosed in the prior art.”); see also
In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997); In re Malagari, 499
F.2d 1297, 1303 (CCPA 1974).
To extent that such overlap is insufficient to establish a prima facie
case of obviousness, Appellants also do not dispute the Examiner’s finding
that Nolas teaches that the filling fraction of filling atoms affects thermal
conductivity and electrical properties and can be optimized depending on the
lattice structure and size of atom filling the voids. (Compare Ans. 7 with
Reply Br. 10.) Consistent with such unquestioned finding, Nolas further
teaches that “[t]he optimum percentage of void subcells or cubes 54 and 57
which are filled in accordance with teachings of the present invention will

2 Appellants, like Nolas, disclose that the filling fraction of sodium or
potassium atoms is greater than 0 and up to 1, but claim the filling fraction
of sodium or potassium atoms in the range of 0.2 to 0.6, 0.5 to 0.6, and 0.6,
respectively and declare such high filling fraction to be based on prediction
only. (Spec. 2-3 and 6, ¶¶ [0007], [0008] and [0022], together with claims
1-5.)
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often depend upon the intended use for the resulting thermoelectric device.”
(col. 21, ll. 7-9.) That is, Nolas teaches that the filling fraction of the filling
atoms is a known result effective variable. Thus, we also concur with the
Examiner that one of ordinary skill in the art would have been led to
determine a workable or optimum range, such as the claimed range, for the
filling fraction of potassium or sodium atoms in the CoSb3 type skutterudites
suggested by Nolas for the same thermoelectric application purpose
disclosed in Appellants’ Specification through routine experimentation. In
re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“[D]iscovery of an optimum
value of a result effective variable . . . is ordinarily within the skill of the
art.”) This is particularly compelling in this case inasmuch as Nolas also
discloses the void sizes (lattice structures) of skutterudites, including CoSb3,
and the sizes of filling atoms, including the sizes of sodium and potassium
atoms, in its Tables 1 and 2, which are said to affect the extent of the filling
fraction of sodium or potassium atoms in the CoSb3 type skutterudites.
(Nolas, col 10, ll. 1-17 and col. 12, l. 58 to col. 13, l. 15, together with Ans.
7 and Reply Br. 10.)
Appellants contend that:
The present patent application identifies a previously
unknown problem that led to the claimed composition as a
potential solution. Namely, the Appellants’ application
identifies a previously unknown problem with filling the
normally void cells of a skutterudite lattice with filler atoms: a
filling fraction limit (FFL) exists for such structures. Nolas’s
disclosure is irrelevant to this previously unknown problem.
Nolas may have sought to optimize the filling fraction of
skutterudite type structures, but was unaware that there are
limitations on filling fraction. Appellants arrived at the
invention of claim 1 by addressing this previously unknown
problem.
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(Reply Br. 12.) This contention, however, is not well taken. First, this
contention is contradicted by the statements in paragraphs [0013] and [0014]
of Appellants’ Specification, which indicate that Appellants’ prediction of
the filling fraction is based on a known study and a known density functional
method. On this record, Appellants have not shown that the claimed subject
matter involves discovery of any unknown problem and/or any unknown
solution.
Second, we discern no inventiveness in Appellants’ prediction of the
filling fraction of sodium or potassium atoms based on FFLs (filling fraction
limits) for Ca, Sr, Ba, La, Ce, and Yb in CoSb3. Nolas teaches that its filling
fraction of filling atoms for skutterudites must be useful for the
thermoelectric application disclosed in Appellants’ Specification and is
known to be optimized based the lattice structure (the sizes of void subcells
of skutterudite crystal lattice) and sizes of filling atoms as indicated supra.
Nolas then identifies the void sizes (lattice structures) of skutterudites,
including CoSb3, and the sizes of filling atoms, including the sizes of sodium
and potassium atoms, which are shown to be similar to those of Ca, Sr, Ba,
La, and Ce, in its Tables 1 and 2. Thus, one of ordinary skill in the art
having the knowledge of such sizes and desired thermoelectric applications
would have reasonably expected to predict the extent of the filling fraction
of sodium or potassium atoms that can be obtained based on the known
prediction of FFLs (filling fractions limits) for the known sizes of Ca, Sr,
Ba, La, and Ce for the void sizes of CoSb3 and to employ the optimum
filling fraction of sodium or potassium atoms for an intended thermoelectric
application. In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (citing In re
O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988)) (“Obviousness does not
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require absolute predictability of success . . . all that is required is a
reasonable expectation of success.”)
Finally, in any event, it is not necessary for Nolas to recognize the
same problem recognized by Appellants. KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 420 (2007) (“Under the correct analysis, any need or problem
known in the field of endeavor at the time of invention and addressed by the
patent can provide a reason for combining the elements in the manner
claimed”). The reason for arriving at the claimed composition taught or
suggested by Nolas need not be identical to that contemplated by Appellants
so long as Nolas provides some reason, suggestion or motivation to arrive at
the claimed composition as indicated supra. In re Beattie, 974 F.2d 1309,
1312 (Fed. Cir. 1992) (“As long as some [reason,] motivation or suggestion
to combine the references is provided by the prior art taken as a whole, the
law does not require that the references be combined for the reasons
contemplated by the inventor.”).
Accordingly, we find no reversible error in the Examiner’s
determination that one of ordinary skill in the art, armed with the teachings
of Nolas, would have been led to the claimed K-filled and Na-filled ternary
skutterudites within the meaning of 35 U.S.C. § 103(a)

II. Claims 9 through 15 under 35 U.S.C. § 103(a) as unpatentable over
the disclosure of Nolas.
Appellants separately contend that Nolas does not teach or suggest
forming a composition comprising first and second CoSb3 type skutterudites
phases, with each phase having a different filling fraction of potassium
and/or sodium atoms as required by claims 9-15. (Reply Br. 19-20.) In
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support of this contention, Appellants refer to paragraph [0020] of the
Specification to define the meaning of the first and second CoSb3 type
skutterudites phases. (Id.) This paragraph refers to two skutterudite phases
as having “slightly different lattice constants.” (Spec. 5, ¶ [0020].)
Moreover, as correctly indicated by the Examiner, paragraphs [0013] and
[0014] of the Specification indicate “the formation of secondary phases
between the impurity atoms [(filling atoms)] and one of the host atoms [(one
of the atoms of CoSb3)]” from those produced from the known processes
described in an article published by Shi et al.
Thus, the dispositive question here is: Has the Examiner reversibly
erred in determining that Nolas would have suggested forming a
composition comprising first and second CoSb3 type skutterudites phases,
with each phase having a different filling fraction of potassium and/or
sodium atoms as required by claims 9 through 15? On this record, we
answer this question in the negative.
As indicated supra, Nolas would have suggested forming potassium
or sodium atom-filled CoSb3 type skutterudites, with the filling fractions of
sodium or potassium atoms within the filling fraction range disclosed and
claimed by Appellants. The Examiner also finds, and Appellants do not
dispute, that such potassium or sodium atom-filled CoSb3 type skutterudites
can be in the form of a composition containing multiple crystals which can
be partially and randomly filled. (Compare Ans. 11 with App. Br. 19-20 and
Reply Br. 13-15; see also Nolas, col. 17, ll. 8-40.) According to column 14,
lines 22-27, of Nolas, “[s]elected properties such as the lattice component of
the thermal conductivity (Kg) may be substantially affected by filling only a
portion of normally void subcells or cubes 54 and 57 associated with the
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respective skutterudite type crystal lattice structure.” In other words, Nolas
implies that multiple skutterudite crystals having different filling fractions
are expected to have different phases, including at least “slightly different
lattice constants.” In re Preda, 401 F. 2d 825, 826 (CCPA 1968) (In
evaluating the content of a reference, “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.”) Thus,
one of ordinary skill in the art interested in forming multiple crystals having
different filling fractions of sodium or potassium atoms within the filling
fraction range recited by claims 9 through 15 and embraced by Nolas would
have been led to form a composition comprising at least first and second
CoSb3 type skutterudite crystals having different phases and different filling
fractions of potassium and/or sodium atoms as required by claims 9 through
15, with a reasonable expectation of successfully using it for desired
thermoelectric applications. On this record, Appellants have not shown that
such CoSb3 type skutterudite crystals having such slightly different lattice
constants are not necessarily obtained when different amounts of dopants or
impurities (filling atoms) are introduced into CoSb3 type skutterudite
crystals as indicated supra.
Accordingly, we find no reversible error in the Examiner’s
determination that Nolas would have suggested forming a composition
comprising first and second CoSb3 type skutterudites phases, with each
phase having a different filling fraction of potassium and/or sodium atoms as
required by claims 9 through 15 within the meaning of 35 U.S.C. § 103(a).
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III. Claims 1 through 5 under 35 U.S.C. § 103(a) as unpatentable over the
disclosure of Yang.
The dispositive question raised by the Examiner and Appellants is:
Has the Examiner reversibly erred in determining that one of ordinary skill
in the art, armed with the teachings of Yang, would have been led to the
claimed K-filled or Na-filled ternary skutterudites within the meaning of
35 U.S.C. § 103(a)? On this record, we answer this question in the negative.
As correctly found by the Examiner at page 14 of the Answer, Yang,
at paragraph [0005], discloses that:
Binary skutterudite compounds crystallize in a body-centered-
cubic structure with space group Im3 and have the form MX3,
where M is Co, Rh or Ir and X is P, As or Sb. Despite their
excellent electronic properties, binary skutterudites have
thermal conductivities that are excessively high to compete
with state-of-the-art thermoelectric materials. It was found that
filled skutterudites . . . are increasingly popular as a
thermoelectric material due to their lower thermal
conductivities. [(Emphasis added.)]

Yang mentions that such conventional filled skutterudites are defined as
GyM4X12, where G represents a guest atom and y represents its filling
fraction. (Yang 1, ¶ [0006].) To reduce the cost of fabricating such
conventional GyM4X12 skutterudites, wherein the most preferred M and X
are Co and Sb, respectively and G is a guest atom selected from rare earth
atoms, Na, K, Ca, Sr, Ba and combinations of these atoms, however, Yang
teaches employing a mischmetal, an alloy of Ce and La, as a source or a
starting material for the guest atom (G). (Yang 1, ¶¶ [0008] and [0009] and
2, ¶¶ [0014]-[0017].) According to Yang, the mischmetal (Mm) is a low
cost alternative to high purity starting materials in fabricating the filled
skutterudites. (Yang 1, ¶¶ [0008] and [0009].) From these disclosures of
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Yang, one of ordinary skill in the art can infer that the pure guest atoms (G),
such as pure Na or K atom, are useful for fabricating GyCo4Sb12
skutterudites, even though the cost of fabricating the filled skutterudites is
higher relative to using the mischmetal. KSR, 550 U.S. at 418 (In making an
obviousness determination, one “can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.”);
Preda, 401 F. 2d at 826; see also Orthopedic Equip. Co., Inc. et al. v. U.S.,
702 F.2d 1005, 1013 (1983) (“the fact that the two disclosed apparatus
would not be combined by businessmen for economic reasons is not the
same as saying that it could not be done because skilled persons in the art
felt that there was some technological incompatibility that prevented their
combination. Only the latter fact is telling on the issue of nonobviousness.”).
Accordingly, we find no reversible error in the Examiner’s
determination that one of ordinary skill in the art, armed with the teachings
of Yang, would have been led to the claimed K-filled or Na-filled ternary
skutterudites within the meaning of 35 U.S.C. § 103(a).

ORDER
Upon consideration of the record, and for the reasons given above, it
is
ORDERED that the decision of the Examiner rejecting claims 1
through 5 and 9 through 15 under 35 U.S.C. § 103(a) as unpatentable over
the disclosure of Nolas is AFFIRMED;
FURTHER ORDERED that the decision of the Examiner rejecting
claims 1 through 5 under 35 U.S.C. § 103(a) as unpatentable over the
disclosure of Yang is AFFIRMED; and
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FURTHER ORDERED that no time period for taking any subsequent
action in connection with this appeal may be extended under 37 C.F.R.
§ 1.136(a) (2010).
AFFIRMED

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