Georgy Samsonidze et al.Download PDFPatent Trials and Appeals BoardDec 20, 201914943069 - (D) (P.T.A.B. Dec. 20, 2019) 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. 14/943,069 11/17/2015 Georgy Samsonidze 1576-1826 9125 10800 7590 12/20/2019 Maginot, Moore & Beck LLP One Indiana Square, Suite 2200 Indianapolis, IN 46204 EXAMINER CHERN, CHRISTINA ART UNIT PAPER NUMBER 1721 MAIL DATE DELIVERY MODE 12/20/2019 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 GEORGY SAMSONIDZE and BORIS KOZINSKY Appeal 2019-001943 Application 14/943,069 Technology Center 1700 ____________ Before ROMULO H. DELMENDO, CHRISTOPHER L. OGDEN, and MERRELL C. CASHION, JR., Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL The Appellant1 appeals under 35 U.S.C. § 134(a) from the Primary Examiner’s final decision to reject claims 1, 2, 6, 7, 10–13, and 19–21.2 Claim 22 was also finally rejected (Final Act. 3), but was subsequently 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42—namely, Robert Bosch GmbH, which is also identified as the real party in interest (Appeal Brief filed October 29, 2018 (“Appeal Br.”) at 2). Also, according to the Specification (Specification filed November 17, 2015 (“Spec.”), ¶ 1), the “invention was made with government support under DE-EE0004840 awarded by the Department of Energy - Office of Energy Efficiency and Renewable Energy” and “[t]he government has certain rights in the invention.” 2 See Appeal Br. 5–19; Reply Brief filed January 2, 2019 (“Reply Br.”) at 2–10; Final Office Action entered June 13, 2018 (“Final Act.”) at 3–15; Examiner’s Answer entered November 23, 2018 (“Ans.”) at 3–14. Appeal 2019-001943 Application 14/943,069 2 canceled (Supplemental Advisory Action entered November 1, 2018 (entering an Amendment filed October 18, 2018)). We have jurisdiction under 35 U.S.C. § 6(b). We reverse. I. BACKGROUND The subject matter on appeal relates to a thermoelectric generator including semiconductor legs formed of a specified alloy having a stable half-Heusler structure and to a vehicle containing such a generator (Specification filed (“Spec.”) ¶¶ 9, 14). According to the Inventors, a vehicle exhaust having a thermoelectric generator operates under the Seebeck principle to convert heat energy represented by a temperature difference between exhaust gas on a hot side and coolant on a cold side into electrical energy, which may then be used to power electrical components in the vehicle, charge the vehicle’s battery, or power the vehicle’s drivetrain (id. ¶ 6). Representative claim 1 is reproduced from the Claims Appendix to the Appeal Brief, as follows: 1. A thermoelectric generator comprising: a hot side heat exchanger; a cold side heat exchanger; a plurality of n-type semiconductor legs arranged between the hot side heat exchanger and the cold side heat exchanger; and a plurality of p-type semiconductor legs arranged between the hot side heat exchanger and the cold side heat exchanger and alternating electrically in series with the plurality of n-type semiconductor legs, wherein at least one of the plurality of n-type semiconductor legs and the plurality of p-type semiconductor legs is formed of an alloy having a stable half-Heusler structure Appeal 2019-001943 Application 14/943,069 3 and comprising Si and Sn with molar fractions of x Sn and 1-x Si, and x is less than 0.5. (Appeal Br. 20 (emphasis added)). Claim 6, the only other independent claim, is directed to a vehicle with an exhaust system including the same thermoelectric generator specified in claim 1 (id. at 21). II. REJECTIONS ON APPEAL The claims on appeal stand rejected under 35 U.S.C. § 103, as follows: A. Claims 1, 2, 10–13, and 19 as unpatentable over Ono et al.3 (“Ono”) in view of Liu et al.4 (“Liu”); B. Claims 6, 7, and 21 as unpatentable over Ono in view of Liu, and further in view of Winckler;5 and C. Claims 1, 10, 11, 19, and 20 as unpatentable over Liu in view of Ono. III. DISCUSSION 1. The Examiner’s Position The Examiner finds that Ono describes a thermoelectric generator having most of the limitations recited in claim 1, including an alloy having a stable half-Heusler structure such as NbCoSn, wherein the Sn may be partially replaced with Sb such that the molar fractions are x Sn and 1-x Sb, wherein x is less than 0.5 (Final Act. 3). The Examiner acknowledges, however, that Ono does not disclose the presence of Si in the structure such 3 US 2004/0261833 A1, published December 30, 2004. 4 US 2010/0163091 A1, published July 1, 2010. 5 US 3,020,325, issued February 6, 1962. Appeal 2019-001943 Application 14/943,069 4 that the molar fractions of Sn and Si are x Sn and 1-x Si, wherein x is less than 0.5 (id. at 4). To resolve this difference, the Examiner relies on Liu (id.). Specifically, the Examiner finds that Liu, which the Examiner considers as analogous art to Ono, teaches a half-Heusler structure such as TiNiSn in which Sn can be partially replaced with Si or Sb (id.). Based on these findings, the Examiner concludes: Since the prior art of Liu recognizes the equivalency of substituting tin with either silicon or antimony in the field of half- Heusler thermoelectric alloys, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to replace the antimony of Ono with the silicon of Liu as it is merely the selection of a functionally equivalent Group IV element recognized in the art and one of ordinary skill in the art would have a reasonable expectation of success in doing so. (Id.). 2. The Appellant’s Contentions The Appellant contends that the Examiner “has failed to clearly articulate the reasons for obviousness, and has therefore not established a prima facie case of obviousness” (Appeal Br. 5). Pointing out that, in claim 1, the molar fraction of Sn, relative to the molar fraction of Si, must be less than 0.5—i.e., “x is less than 0.5”—the Appellant argues that “[n]one of the prior art references teach or suggest a half-Heusler silicon-tin alloy that has more silicon [Si] than tin [Sn]” (id. at 6). Specifically, the Appellant urges that “Ono recognizes that doping the tin alloy with a small percentage of antimony can improve the electrical conductivity of the resulting alloy,” as disclosed in Ono’s working examples in which the Sb doping levels were 0%, 1%, or 2%, but Ono teaches away from replacing more than 50% of Sn Appeal 2019-001943 Application 14/943,069 5 with Sb by disclosing that replacing large quantities of Sn with Sb adversely affects the alloy’s properties (id. at 8–10 (citing, e.g., Ono ¶¶ 34, 54–70)). The Appellant further argues that the Examiner’s obviousness rationale based on substituting a portion of Sn with either Si or Sb as equivalent elements is flawed because Liu “merely indicating that silicon and antimony are two elements that may be substituted for tin in Liu does not establish that the properties of such a modification would be the same in any alloy” such as that disclosed in Ono (Appeal Br. 11). The Appellant points out that Sb (Group V) has one more valence electron than Sn (Group IV), whereas Si (Group IV) has the same number of valence electrons as Sn (id.). According to the Appellant, an obviousness rationale based on substitution of one element for another is permissible only when the substitution would be expected to provide a predictable result but “since the results of modifying Ono to replace the antimony doping agent with silicon would not have been predictable, Ono and Liu cannot be combined so as to establish a prima facie case of obviousness with respect to claim 1” (id. at 12). 3. Opinion We agree with the Appellant that the Examiner’s rejection fails to articulate a sufficient reason to support a conclusion that a person having ordinary skill in the art would have combined Ono and Liu in the manner as recited in claim 1. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). Ono describes a thermoelectric conversion material that includes a half-Heusler alloy represented by the formula QRL, wherein Q is at least one element selected from group 5 elements V, Nb, and Ta, R is at least one Appeal 2019-001943 Application 14/943,069 6 element selected from Co, Rh, and Ir, and L is at least one element selected from Sn and Ge (Ono ¶¶ 2, 32). Ono teaches that the alloy’s physical properties may be controlled by substituting the atoms and slightly changing the state in the vicinity of the Fermi level in order to increase the Seebeck coefficient and reduce the electric resistivity (id. ¶ 33). Specifically, Ono teaches that “when part of the element L is substituted by an element Z (Z=Sb, In) and doped with a carrier, that is, when the foregoing formula is QR(L1-pZp), where 0Copy with citationCopy as parenthetical citation