Smythe, Robert Michael. et al.

Patent Trials and Appeals Board

Mar 2, 2020

12560194 - (D) (P.T.A.B. Mar. 2, 2020)

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.
12/560,194 09/15/2009 Robert Michael Smythe 9062N-000490-US 9852
28997 7590 03/02/2020
Harness Dickey (St. Louis)
7700 Bonhomme, Suite 400
St. Louis, MO 63105
EXAMINER
PILLAY, DEVINA
ART UNIT PAPER NUMBER
1726
NOTIFICATION DATE DELIVERY MODE
03/02/2020 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):
bkamer@hdp.com
stldocket@hdp.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT MICHAEL SMYTHE,
JEFFREY GERARD HERSHBERGER,
and RICHARD F. HILL
____________

Appeal 2019-003863
Application 12/560,194
Technology Center 1700
____________
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–9, 12–14, 16–18, 21, 28, 31, 33–37,
39–43, and 46–49 of Application 12/560,194. Final Act. (April 30, 2018).
We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we affirm.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Laird Technologies, Inc., as the real party
in interest. Appeal Br. 4.
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I. BACKGROUND
The ’194 Application describes a thermoelectric module having upper
and lower laminates with thermoelectric elements positioned therebetween.
Spec. ¶ 2. The Specification describes that passing an electrical current
through the thermoelectric module causes heat to be pumped from one
laminate to another, e.g., a lower laminate to an upper laminate. Id. ¶¶ 4, 38;
Fig. 2. The ’194 Application describes that this heat pumping results in a
temperature difference in the laminates, e.g., a cooler lower laminate and a
warmer upper laminate. Id. ¶ 38. The Specification describes that objects
exposed to a cooler laminate’s side may be cooled by transferring heat from
the cooler laminate to the warmer laminate. Id. The Specification refers to
such a thermoelectric module, which is used as a heat pump to cool objects,
as a thermoelectric cooler (TEC). Id. ¶ 4.
Claims 1, 28, and 34 are representative of the ’194 Application’s
claims and are reproduced below from the Claims Appendix of the Brief
(emphasis added).
1. A multistage thermoelectric module comprising:
a first laminate having a dielectric layer and multiple
electrically conductive pads coupled to the dielectric layer;
a second laminate having an electrically conductive
layer, dielectric layers coupled to opposing sides of the
electrically conductive layer such that the electrically
conductive layer is disposed generally between the dielectric
layers, and electrically conductive pads coupled to each of the
dielectric layers;
a third laminate having a dielectric layer and multiple
electrically conductive pads coupled to the dielectric layer, the
second laminate disposed generally between the first laminate
and the third laminate; and
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thermoelectric elements disposed generally between the
first and second laminates and between the second and third
laminates with each of the thermoelectric elements spaced apart
from adjacent thermoelectric elements such that spacing filled
with ambient air is provided between the adjacent
thermoelectric elements;
wherein the thermoelectric elements disposed generally
between the first and second laminates are soldered to the
electrically conductive pads of the first and second laminates
for electrically coupling the thermoelectric elements together,
and wherein the thermoelectric elements disposed generally
between the second and third laminates are soldered to the
electrically conductive pads of the second and third laminates
for electrically coupling the thermoelectric elements together;
and
wherein the dielectric layer of the first laminate, the
dielectric layers of the second laminate, and the dielectric layer
of the third laminate are structurally rigid and not flexible at
room temperature.
28. A thermoelectric module comprising:
a first laminate having a polymeric dielectric layer,
multiple electrically conductive pads coupled to the polymeric
dielectric layer, and an electrically conductive layer coupled to
the polymeric dielectric layer such that the polymeric dielectric
layer is disposed generally between the electrically conductive
pads and the electrically conductive layer;
a second laminate having a polymeric dielectric layer,
multiple electrically conductive pads coupled to the polymeric
dielectric layer of the second laminate, and an electrically
conductive layer coupled to the polymeric dielectric layer of the
second laminate such that the polymeric dielectric layer of the
second laminate is disposed generally between the electrically
conductive pads of the second laminate and the electrically
conductive layer of the second laminate; and
multiple thermoelectric elements disposed generally
between the first and second laminates;
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wherein the thermoelectric elements are electrically
coupled to form multiple electrically independent subcircuits,
each of the subcircuits electrically isolated for carrying current
between the thermoelectric module and a controller external to
the thermoelectric module whereby said subcircuit is
electrically controllable from outside the thermoelectric module
via the controller.
34. A thermoelectric module comprising:
a first laminate having a polymeric dielectric layer and
multiple electrically conductive pads coupled to the polymeric
dielectric layer;
a second laminate having a polymeric dielectric layer and
multiple electrically conductive pads coupled to the dielectric
layer of the second laminate; and
thermoelectric elements disposed generally between the
first and second laminates with each of the thermoelectric
elements spaced apart from adjacent thermoelectric elements
such that spacing filled with air is provided between the
adjacent thermoelectric elements;
wherein the thermoelectric elements are coupled to the
electrically conductive pads of the first and second laminates
for electrically coupling the thermoelectric elements together;
and wherein the dielectric layer of the first laminate and/or the
dielectric layer of the second laminate has a thickness
dimension of greater than 0.002 inches but less than 0.013
inches.
Appeal Br. 23–24, 27–28, 29 (Claims App.) (emphasis added).
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II. REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 3, 4, 9, 12–14, 16–18, 21, 33, 43, 46, and 47 are rejected
under 35 U.S.C. § 103(a) as unpatentable over the combination of
Kuchimachi,2 Tauchi,3 and Morimoto.4 Final Act. 3–8.
2. Claim 2 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Kuchimachi, Tauchi, Morimoto, and Kato.5
Final Act. 8–9.
3. Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Kuchimachi, Tauchi, Morimoto, and Makino.6
Final Act. 9–10.
4. Claims 6–8 are rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Kuchimachi, Tauchi, Morimoto, and
Ouyang.7 Final Act. 10–13.
5. Claims 34, 37, 39–42, 48, and 49 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Kuchimachi,
Morimoto, and Odaira.8 Final Act. 13–15.

2 US 2007/0227158 A1, published Oct. 4, 2007.
3 US 5,936,192, issued Aug. 10, 1999.
4 US 2008/0276624 A1, published Nov. 13, 2008.
5 US 2011/0156853 A1, published June 30, 2011.
6 JP 08-078847 A, published March 22, 1996. We shall follow the Examiner
and Appellant by referring to a machine translation that was made of record
in this appeal on Aug. 18, 2017.
7 US 7,436,059 B1, issued Oct. 14, 2008.
8 US 5,600,103, issued Feb. 4, 1997.
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6. Claims 35 and 36 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Kuchimachi, Morimoto,
Odaira, and Ouyang. Final Act. 15–16.
7. Claims 28 and 31 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Kuchimachi, Ouyang, and
Morimoto. Final Act. 16–18.
III. DISCUSSION
Appellant argues for the reversal of the obviousness rejections of
claims 1–9, 12–14, 16–18, 21, 28, 31, 33–37, 39–43, and 46–49 on the basis
of limitations present in independent claims 1, 28, and 34. Appeal Br. 9–20.
We select claims 1, 28, and 34 as representative. 37 C.F.R. § 41.37(c)(1)(iv).
Appellant also presents a separate argument for the patentability of claims 8
and 36. Appeal Br. 14–15, 18–19. Accordingly, claims 2–7, 9, 12–14, 16–
18, 21, 31, 33, 35, 37, 39–43, and 46–49 will stand or fall with each of their
respective independent claims. We will address claims 8 and 36 separately.
A. Rejection of claims 1, 3, 4, 9, 12–14, 16–18, 21, 33, 43, 46,
and 47 as unpatentable over the combination of Kuchimachi,
Tauchi, and Morimoto.
According to Appellant, the combination of Kuchimachi, Tauchi, and
Morimoto does not describe or suggest the following elements of claim 1:
(1) “a second laminate having an electrically conductive layer, dielectric
layers coupled to opposing sides of the electrically conductive layer such
that the electrically conductive layer is disposed generally between the
dielectric layers,” and (2) “electrically conductive pads coupled to each of
the dielectric layers.” See generally id. 9–12.
First, the Examiner found that Kuchimachi, modified by Tauchi,
describes or suggests the claimed multistage thermoelectric module with
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each requisite laminate. Final Act. 3–4. The Examiner found that modified
Kuchimachi, however, fails to describe or suggest that the second laminate
would have had “an electrically conductive layer with dielectric layers on
opposing sides such that the electrically conductive layer is disposed
between the dielectric layers.” Id. 4. The Examiner relied upon Morimoto to
describe the limitations missing from the combination of Kuchimachi and
Tauchi. Id.
Morimoto’s Figure 11, reproduced below, illustrates a schematic
cross-section diagram of a thermoelectric module:

Morimoto’s Figure 11 illustrates features of substrate intermediate
form 215, including thermoelectric transducer electrodes 23, IC electrodes
71 and 72, communication electrode 52, and communication electrode 64.
Morimoto ¶ 64, Fig. 11; see also id. ¶ 61, Fig. 10 (depicting dielectric
aluminum oxide layers 216, 217, 218 with copper layers 510 therebetween
providing an electrical connection between thermoelectric transducer
electrode 23 and communication electrode 52.).
The Examiner found Morimoto discloses “that connections for a
thermoelectric device (pads of 23) can be routed through a substrate, which
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comprises several layers, to allow for interconnection to other electrical
connections.” Final Act. 4 (discussing Morimoto Fig. 11).
According to Appellant, Morimoto’s teachings regarding internal
wirings apply only to a thermoelectric module’s top or bottom laminate,
which is used to connect thermoelectric transducers to an external device.
Appeal Br. 11 (citing Tauchi Fig. 9). Appellant thus argues that Morimoto’s
internal wirings for non-intermediate laminates cannot describe or suggest
the claimed second (or intermediate) laminate having dielectric layers
coupled to opposing sides of an electrically conductive layer. Id. Rather than
apply Morimoto’s teachings, Appellant argues that the ordinarily skilled
artisan would have “simply use[d Tauchi’s] through hole” 10 for
interconnections within an intermediate layer. Id.; see Tauchi Fig. 4.
The Examiner responds that Tauchi’s electrode 5m on the second
laminate in modified Kuchimachi’s multistage thermoelectric module could
have been “lead through substrate to interconnecting electrodes on surface[,]
as disclosed by Morimoto[,] to connect to a device which provides power.”
Answer 21 (discussing Tauchi Fig. 4). The Examiner, furthermore,
determined that
[i]t would have been obvious to one of ordinary skill in the art
at the time of the invention to modify the second laminate and
the method of interconnection between groups of thermoelectric
elements of modified Kuchimachi by having the second
laminate comprise multiple dielectric layers and have the
interconnections between groups of thermoelectric devices
routed through the layers as disclosed by Morimoto because it
will allow for a more efficient use of space.
Final Act. 4–5 (emphasis added).
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We determine that the Examiner has provided adequate reasoning to
rebut Appellant’s unsupported assertion regarding what the ordinarily skilled
artisan would have gleaned from the applied prior art.9
We, therefore, are not persuaded that Appellant has established the
existence of reversible error regarding the Examiner’s finding that Morimoto
describes or suggests the claimed second or intermediate laminate having
dielectric layers coupled to opposing sides of an electrically conductive
layer.
Second, Appellant argues that Morimoto’s electrically conductive
pads 23 are coupled only to top dielectric layer 218, with no such pads
coupled to bottom dielectric layer 216. Appeal Br. 10–11; see Morimoto
Figs. 10, 11.
Appellant’s argument fails to address the Examiner’s specific
findings. For example, the Examiner relies on Tauchi for disclosing a
multistage device comprising a second laminate between a first and a third
laminate. Answer 20 (citing Tauchi Figs. 4, 9). In particular, the Examiner
found Tauchi, not Morimoto, teaches that a “second laminate includes

9 We note that the Summary of Claimed Subject Matter undercuts
Appellant’s argument that Morimoto’s internal wirings are limited to top and
bottom laminates. Appeal Br. 4–5. For a depiction of the claimed second
laminate “having an electrically conductive layer, dielectric layers coupled
to opposing sides of the electrically conductive layer,” Appellant directs our
attention to electrically conductive layer 216b and dielectric layers 220b and
220c. Id. (citing Spec. Figs. 8, 9). Appellant, thus, implicitly admits that
internal wirings, which are located in a bottom or “lower laminate 204,” can
be used in an intermediate, i.e., the claimed second, laminate. Spec. ¶¶ 44,
45; see also id. ¶¶ 16, 19, 20; compare id. Figs. 8, 9 with Morimoto Figs. 10,
11.

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conductive pads on opposing sides of the laminate to interconnect
thermoelectric elements (6).” Answer 20; see also Tauchi 5:4–8, Fig. 4
(Depicting copper pads 5m and 5b on substrate 3’s top and bottom surfaces,
respectively.)). We note Kuchimachi discloses that thermoelectric elements
are soldered to electrically conductive pads. Kuchimachi ¶ 46.
Appellant’s argument is thus directed to attacking the individual
references rather than the combined teaching of these references.
Appellant’s criticism of Morimoto, therefore, does not establish
nonobviousness. See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (“[T]he test for combining
references is not what the individual references themselves suggest but
rather what the combination of disclosures taken as a whole would suggest
to one of ordinary skill in the art.”).
In view of the foregoing, we are not persuaded that Appellant has
demonstrated that the Examiner reversibly erred in finding that the
combination of Kuchimachi, Tauchi, and Morimoto describes or suggests
the claimed “second laminate having an electrically conductive layer,
dielectric layers coupled to opposing sides of the electrically conductive
layer such that the electrically conductive layer is disposed generally
between the dielectric layers, and electrically conductive pads coupled to
each of the dielectric layers.”
We, therefore, determine that the Examiner did not reversibly err in
rejecting claim 1, as unpatentable over the combination of Kuchimachi,
Tauchi, and Morimoto. Accordingly, we also affirm the rejection of claims
3, 4, 9, 12–14, 16–18, 21, 33, 43, 46, and 47, which depend from claim 1.
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B. Rejection of claim 2 as unpatentable over the combination of
Kuchimachi, Tauchi, Morimoto, and Kato.
Appellant argues that the rejection of claim 2 as unpatentable over the
combination of Kuchimachi, Tauchi, Morimoto, and Kato should be
reversed for the reasons set forth in arguing for reversal of the rejection of
claim 1 as unpatentable over the combination of Kuchimachi, Tauchi, and
Morimoto. Appeal Br. 12.
As discussed above, we have affirmed the rejection of claim 1 as
unpatentable over the combination of Kuchimachi, Tauchi, and Morimoto.
In view of the foregoing, we determine that the Examiner did not reversibly
err in rejecting claim 2 as unpatentable over the combination of Kuchimachi,
Tauchi, Morimoto, and Kato.
C. Rejection of claim 5 as unpatentable over the combination of
Kuchimachi, Tauchi, Morimoto, and Makino.
Appellant argues that the rejection of claim 5 as unpatentable over the
combination of Kuchimachi, Tauchi, Morimoto, and Makino should be
reversed for the reasons set forth in arguing for reversal of the rejection of
claim 1 as unpatentable over the combination of Kuchimachi, Tauchi, and
Morimoto. Id.
As discussed above, we have affirmed the rejection of claim 1 as
unpatentable over the combination of Kuchimachi, Tauchi, and Morimoto.
In view of the foregoing, we determine that the Examiner did not reversibly
err in rejecting claim 5 as unpatentable over the combination of Kuchimachi,
Tauchi, Morimoto, and Makino.
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D. Rejection of claims 6–8 as unpatentable over the combination
of Kuchimachi, Tauchi, Morimoto, and Ouyang.
a. Claim 8
Claim 8 is reproduced below from the Claims Appendix of the Brief
(emphasis added).
8. The multistage thermoelectric module of claim 1,
wherein the thermoelectric elements are electrically coupled to
form two or more electrically independent subcircuits, each
subcircuit disposed in a different layer of the first or third
laminate, each subcircuit electrically isolated for carrying
current between the thermoelectric module and a controller
external to the thermoelectric module whereby said subcircuit
is electrically controllable from outside the module via the
controller.
Appeal Br. 25 (Claims App.) (emphasis added).
According to Appellant, the combination of Kuchimachi, Tauchi,
Morimoto, and Ouyang does not describe or suggest that each subcircuit is:
(1) electrically isolated, id. 14, and (2) disposed between substrates. Id.
First, the Specification describes that subcircuits 230 are
thermoelectric elements 210 arranged to “allow[] cooling power to be raised
and lowered in different areas separately, and dynamically.” Spec. ¶ 39, Fig.
5. Likewise, Ouyang teaches that thermoelectric elements may be grouped
for a substantially similar purpose as the claimed subcircuits. As the
Examiner found, Ouyang discloses use of an external controller to direct
groups of smaller thermoelectric elements to cool localized hot spots on a
microprocessor chip. Final Act. 12 (citing Ouyang 6:22–40, Fig. 3). We,
therefore, agree with the Examiner that such external control of localized
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cooling describes or suggests “electrical isolation between thermoelectric
element groups.” Answer 23 (citing Ouyang 6:58–67).10
Appellant’s argument thus fails to show error in the Examiner’s
findings that Ouyang’s groupings of thermoelectric elements suggests the
claimed “subcircuits,” which are “electrically isolated.”
Second, Appellant argues that Ouyang’s multiple individual modules
fail to have “a common first and second (or second and third) substrate[,]
between which the thermoelectric elements are all disposed.” Appeal Br. 14;
see Spec. Fig. 10.
Appellant’s argument fails to address the Examiner’s specific
findings. As set forth above, the Examiner relies on Kuchimachi, as
modified by Tauchi and Morimoto, for disclosing or suggesting the claimed
multistage device module comprising the first, second, and third laminates,
with thermoelectric elements therebetween. Final Act. 3–5. In particular, the
Examiner found Tauchi, not Ouyang, teaches that “multi-stage
thermoelectric cooling can comprise stacks of thermoelectric modules,”
which “leads to more efficient cooling.” Id. (citing Tauchi Fig. 4). The
Examiner found Morimoto, not Ouyang, teaches placement of electrically
conductive layers on opposing sides of a laminate to provide connections to
external leads. Id. at 12–13 (citing Morimoto ¶ 61; Figs. 10, 11, 14). The
Examiner, moreover, found Ouyang teaches that ceramic substrates may be

10 We note that Ouyang’s Figure 4a describes that an external “controller
303 may adjust the cooling rate of a TEC device 151 in the TEC device
array 106 to counter the change in the non-uniform heat emission pattern.”
Ouyang 6:6–9, Fig. 4a. Appellant, furthermore, does not dispute the
Examiner’s findings that Ouyang teaches the use of multiple individual
thermoelectric modules together. Appeal Br. 14.
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located above and below the thermoelectric elements. Answer 23 (citing
Ouyang 4:40–45).
The Examiner determined, inter alia, that it would have been obvious
to one of ordinary skill in the art at the time of the invention to modify
Kuchimachi’s thermoelectric device to have: (i) “multiple stages including
three or more stages as disclosed by Tauchi . . . because it will allow for
more efficient cooling and a more compact size, Final Act. 4; (ii) “different
groups of thermoelectric elements wherein each group is a subcircuit[,] on
the same substrate[, and] connected to a controller as disclosed by Ouyang
because it will optimize the amount of cooling delivered,” id. at 12; and (iii)
“a plurality of conductive layers on different dielectric layers of the
dielectric substrate . . . because it will aid in routing connections through
different layers of the laminate substrate to the subcircuits and allow for
external leads to be connected as disclosed by Morimoto.” Id. at 13.
Therefore, Appellant’s argument that Ouyang’s individual
thermoelectric modules lack a common first and second (or second and
third) substrate, between which the thermoelectric elements are all disposed,
is directed to attacking the individual references rather than the combined
teaching of these references. Appellant’s criticism of Ouyang, therefore,
does not establish nonobviousness. See Keller, 642 F.2d at 426; McLaughlin,
443 F.2d at 1395.
In view of the foregoing, we are not persuaded that Appellant has
demonstrated that the Examiner reversibly erred in finding that the
combination of Kuchimachi, Tauchi, Morimoto, and Ouyang describes or
suggests the limitations recited in claim 8.
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We, therefore, determine that the Examiner did not reversibly err in
rejecting claim 8, as unpatentable over the combination of Kuchimachi,
Tauchi, Morimoto, and Ouyang.
b. Claims 6–8
Appellant argues that the rejection of claims 6–8 as unpatentable over
the combination of Kuchimachi, Tauchi, Morimoto, and Ouyang should be
reversed for the reasons set forth in arguing for reversal of the rejection of
claim 1 as unpatentable over the combination of Kuchimachi, Tauchi, and
Morimoto. Appeal Br. 14.
As discussed above, we have affirmed the rejection of claim 1 as
unpatentable over the combination of Kuchimachi, Tauchi, and Morimoto.
In view of the foregoing, we determine that the Examiner did not reversibly
err in rejecting claims 6–8 as unpatentable over the combination of
Kuchimachi, Tauchi, Morimoto, and Ouyang.
E. Rejection of claims 34, 37, 39–42, 48, and 49 as unpatentable
over the combination of Kuchimachi, Morimoto, and Odaira.
According to Appellant, the combination of Kuchimachi, Morimoto,
and Odaira does not describe or suggest the following elements of claim 34:
“the dielectric layer of the first laminate and/or the dielectric layer of the
second laminate has a thickness dimension of greater than 0.002 inches but
less than 0.013 inches.” See id. at 15–17.
The Examiner found that Kuchimachi, modified by Morimoto,
describes or suggests each limitation of the claimed thermoelectric module
except the thickness(es) of the dielectric layer(s). Final Act. 13–15. The
Examiner, however, relied upon Odaira to describe these limitations. Id. at
14–15. In particular, the Examiner found “Odaira discloses that . . . the
first/second laminate dielectric layer . . . has a wiring interconnection
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running through . . . and that the dielectric resin with the wiring
interconnection can have a thickness ranging from 50 to 800 microns
(0.002–0.03 inches).” Id. (citing Odaira 6:50–7:15; Figs. 8A, 8B); see also
Answer 24. The Examiner determined that
[i]t would have been obvious to one of ordinary skill in the art
at the time of the invention to modify the thickness of the
polymeric dielectric layer of modified [Kuchimachi] to be
within the overlapping range claimed and the range disclosed in
Odaira because selection of overlapping portion of ranges has
been held to be a prima facie case of obviousness.
Final Act. 15.
Appellant argues, inter alia, that: (1) Odaira’s conductive bumps,
which extend through a laminate, would have compromised the electrical
insulating characteristics of the polymeric dielectric layers in Kuchimachi’s
modified thermoelectric module, Appeal Br. 15–16; (2) named inventor Mr.
Hershberger’s Rule 132 Declaration (filed June 22, 2017) avers that
Kuchimachi’s substrate could not have a thickness of less than 0.02 inches,
and still provide suitable mechanical strength for manufacturing, handling,
and soldering, Rule 132 Decl. ¶ 4; and (3) Odaira’s conductive bumps would
have rendered Kuchimachi’s modified thermoelectric module unsatisfactory
for its intended use in cooling a heating element, Appeal Br. 16.
First, argument (1) is unpersuasive because it is directed to whether it
was improper for the Examiner to combine Odaira’s conductive bumps with
Kuchimachi’s modified thermoelectric module, when Kuchimachi’s
structure does not have conducting bumps extending through the laminate.
The test for obviousness[, however,] is not whether the features
of a secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
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the references would have suggested to those of ordinary skill
in the art.
Keller, 642 F.2d at 425. In this case, the Examiner did not rely upon Odaira
to teach modifying Kuchimachi based on the structure of Odaira because
Kuchimachi, as modified by Morimoto, already teaches the structure recited
in claim 34. Final Act. 13–15.
Second, in view of Odaira’s teachings, we are not persuaded by Mr.
Hershberger’s Rule 132 Declaration. The preponderance of evidence
supports the Examiner’s findings that Odaira’s dielectric layers, with
electrical connections running therethrough and conductive layers on either
side, can possess a thickness ranging from .002–0.03 inches. Answer 25
(citing Odaira Figs. 8A, 8B); see also Odaira 6:50–7:15.
It is well established that when claimed and prior art products are
produced by identical or substantially identical processes, the PTO can
require an applicant to prove that the prior art products do not necessarily or
inherently possess the characteristics of his claimed product. In re Best, 562
F.2d 1252, 1256 (CCPA 1977). Appellant has not met this burden. The Rule
132 Declaration is silent as to any persuasive evidence demonstrating that
Kuchimachi’s substrate, comprising an inorganic filler and polyimide resin
like Odaira, could not be modified to have a thickness less than
approximately 0.013 inches and still have the necessary mechanical strength.
See Kuchimachi ¶ 57; Odaira 6:65–7:15.
Third, we are not persuaded by argument (3) as Odaira and
Kuchimachi teach similar materials for providing heat exchange surfaces. As
mentioned supra, Odaira’s circuit board is formed from synthetic resin
sheets, such as polyimide, with inorganic filler. Odaira 6:65–7:15. Likewise,
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Kuchimachi similarly teaches the combination of polyimide resin with
ceramic filler for improved heat transference. Kuchimachi ¶ 57.
In view of the foregoing, we are not persuaded that Appellant has
demonstrated that the Examiner reversibly erred in finding that the
combination of Kuchimachi, Morimoto, and Odaira describes or suggests the
claimed “dielectric layer of the first laminate and/or the dielectric layer of
the second laminate has a thickness dimension of greater than 0.002 inches
but less than 0.013 inches.” Answer 24.
We, therefore, determine that the Examiner did not reversibly err in
rejecting claim 34, as unpatentable over the combination of Kuchimachi,
Tauchi, and Morimoto. Accordingly, we also affirm the rejection of claims
37, 39–42, 48, and 49, which depend from claim 34.
F. Rejection of claims 35 and 36 as unpatentable over the
combination of Kuchimachi, Morimoto, Odaira, and Ouyang.
a. Claim 36
Claim 36 is reproduced below from the Claims Appendix of the Brief
(emphasis added).
36. The thermoelectric module of claim 34, wherein the
thermoelectric elements are electrically coupled to form two or
more electrically independent subcircuits, each subcircuit
disposed in a different layer of the first laminate or the second
laminate, and each subcircuit electrically isolated for carrying
current between the thermoelectric module and a controller
external to the thermoelectric module whereby said subcircuit
is electrically controllable independent of the other subcircuits
from outside the module via the controller.
Appeal Br. 30 (Claims App.) (emphasis added).
According to Appellant, the combination of Kuchimachi, Morimoto,
Odaira, and Ouyang does not describe or suggest that each subcircuit: (1) is
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electrically isolated, id. 18, and (2) has “a common first and second substrate
between which the thermoelectric elements are all disposed.” Id.
Appellant essentially argues that the rejection of claim 36 as
unpatentable over the combination of Kuchimachi, Morimoto, Odaira, and
Ouyang should be reversed for the reasons set forth in arguing for reversal of
the rejection of claim 8 as unpatentable over the combination of
Kuchimachi, Tauchi, Morimoto, and Ouyang.
As discussed above, we have affirmed the rejection of claim 8 as
unpatentable over the combination of Kuchimachi, Tauchi, Morimoto, and
Ouyang. As mentioned, supra, Appellant’s arguments: (1) fail to show error
in the Examiner’s findings that Ouyang’s groupings of thermoelectric
elements suggests the claimed electrically isolated subcircuits, and (2) attack
Ouyang separately rather than identifying error in the Examiner’s reasons
for combining references’ teachings.
In view of the foregoing, we are not persuaded that Appellant has
demonstrated that the Examiner reversibly erred in finding that the
combination of Kuchimachi, Morimoto, Odaira, and Ouyang describes or
suggests the limitations recited in claim 36.
We, therefore, determine that the Examiner did not reversibly err in
rejecting claim 36, as unpatentable over the combination of Kuchimachi,
Morimoto, Odaira, and Ouyang.
b. Claims 35 and 36
Appellant argues that the rejection of claims 35 and 36 as
unpatentable over the combination of Kuchimachi, Morimoto, Odaira, and
Ouyang should be reversed for the reasons set forth in arguing for reversal of
the rejection of claim 34 as unpatentable over the combination of
Kuchimachi, Morimoto, and Odaira. Appeal Br. 14.
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As discussed above, we have affirmed the rejection of claim 34 as
unpatentable over the combination of Kuchimachi, Morimoto, and Odaira.
In view of the foregoing, we determine that the Examiner did not reversibly
err in rejecting claims 35 and 36 as unpatentable over the combination of
Kuchimachi, Morimoto, Odaira, and Ouyang.
G. Rejection of claims 28 and 31 as unpatentable over the
combination of Kuchimachi, Ouyang, and Morimoto.
According to Appellant, the combination of Kuchimachi, Ouyang, and
Morimoto does not describe or suggest that each subcircuit: (1) is
electrically isolated, id. 19, and (2) has “a common first substrate and second
substrate between which all of the thermoelectric elements are connected (to
electrically conductive pads on each of the first and second substrates) and
disposed.”11 Id. 20.
Appellant essentially argues that the rejection of claim 28 as
unpatentable over the combination of Kuchimachi, Ouyang, and Morimoto
should be reversed for the reasons set forth in arguing for reversal of the
rejection of claim 8 as unpatentable over the combination of Kuchimachi,
Tauchi, Morimoto, and Ouyang.

11 To the extent that Appellant presents a new argument that the applied
prior art does not disclose or suggest the claimed location of electrical
conductive pads, we are not persuaded. Kuchimachi discloses that
thermoelectric elements are soldered to electrically conductive pads.
Kuchimachi ¶ 46. Likewise, Morimoto similarly depicts conductive
electrode pads for a thermoelectric device. See Morimoto Fig. 11 (showing
pads 23 on dielectric surface 218 (see Fig. 9)).
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As discussed above, we have affirmed the rejection of claim 8 as
unpatentable over the combination of Kuchimachi, Tauchi, Morimoto, and
Ouyang.
In view of the foregoing, we are not persuaded that Appellant has
demonstrated that the Examiner reversibly erred in finding that the
combination of Kuchimachi, Ouyang, and Morimoto describes or suggests
the limitations recited in claim 28. We, therefore, determine that the
Examiner did not reversibly err in rejecting claim 28, as unpatentable over
the combination of Kuchimachi, Ouyang, and Morimoto. Accordingly, we
also affirm the rejection of claim 31, which depends from claim 28.
IV. CONCLUSION
In summary:
Claims Rejected 35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
1, 3, 4, 9, 12–14,
16–18, 21, 33, 43,
46, 47
103(a) Kuchimachi, Tauchi, Morimoto
1, 3, 4, 9, 12–
14, 16–18,
21, 33, 43,
46, 47

2 103(a) Kuchimachi, Tauchi, Morimoto, Kato 2
5 103(a) Kuchimachi, Tauchi, Morimoto, Makino 5
6–8 103(a) Kuchimachi, Tauchi, Morimoto, Ouyang 6–8
34, 37, 39–42, 48,
49 103(a) Kuchimachi, Morimoto, Odaira
34, 37, 39–
42, 48, 49
35, 36 103(a) Kuchimachi, Morimoto, Odaira, Ouyang 35, 36
28, 31 103(a) Kuchimachi, Ouyang, Morimoto 28, 31
Overall Outcome
1–9, 12–14,
16–18, 21,
28, 31, 33–
37, 39–43,
46–49

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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)(iv).
AFFIRMED