Ex Parte YeDownload PDFPatent Trial and Appeal BoardMar 6, 201711843609 (P.T.A.B. Mar. 6, 2017) Copy Citation 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. 2 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.”). 3 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 4 Copy with citationCopy as parenthetical citation