DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim Objections
Claims 25 and 37 are objected to because of the following informalities: Claim 25, line 2 and Claim 37, line 2 recite “runs generally parallel thereto a centerline” and should recite --runs generally parallel to a centerline--. Appropriate correction is required.
Claim 35 is objected to because of the following informalities: Claim 35, line 2 recites “wherein the heating circuit is arranged on the circuit layer prior to the circuit layer is secured” and should recite --wherein the heating circuit is arranged on the circuit layer prior to the circuit layer being secured--. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 23, 24 and 40 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claims 23 and 40 recite “a first plurality of mounting holes…a second plurality of mounting holes in the connector portion…a plurality of mounting pins… wherein when the mounting pins are received in the first plurality and second plurality of mounting holes” The specification describes mounting holes 119 that receive mounting pins 136, but there is no description with respect to second plurality of mounting holes in the connector portion or the pins being received in the first plurality and the second plurality of mounting holes. The specification additionally discloses channels 132 on the connection portion that mate with ribs 118 on the connector interface of the electrical source 102, but again there is no description with respect to second plurality of mounting holes in the connector portion or the pins being received in the first plurality and the second plurality of mounting holes.
Claim 24 is necessarily rejected as being dependent on rejected claim 23.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 40 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 40 recites the limitation "the connector portion" in line 3. There is insufficient antecedent basis for this limitation in the claim. It is suggested that this be amended to --a connector portion--.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 21, 25, 28, 33 and 35 is/are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by US 2018/0339157 1 to Tuan (Tuan).
Regarding claim 21, Tuan teaches an apparatus (title “Portable One-Piece Therapeutical Apparatus with Dual Heating and Low-Frequency Treatment Functions”) comprising an electrical source (accommodating unit 111) comprising an outer shell (upper casing 22), a battery (battery 213) arranged within the outer shell ([0034]), and at least one electrical connector (printed circuit board assembly 21) electrically connected to the battery ([0034]), and a circuit board (312 in combination with 30 and [0035]) comprising an inner layer (heating plate 31), an outer layer (diffuser 312), a heating portion (heating circuit pattern 311) comprising a heating circuit (311) arranged between the outer layer and the inner layer ([0035]) of the circuit board (Fig. 3), and a connector portion (part of the printed circuit board assembly 21 that the electrical contact terminal 32 is coupled to so as to provide electrical coupling between 21 and 32 for producing a heating effect) between the outer layer and the inner layer of the circuit board extending from the heating portion (Fig. 3), wherein a circuit element (electrical contact terminal 32) extends from between the inner layer and outer layer and is configured to electrically connect the heating circuit to the electrical connector ([0035] which states in part “an electrical contact terminal 32 electrically coupled to the printed circuit board assembly 21 for producing a heating effect…”).
Regarding claim 25, Tuan teaches the apparatus of claim 21 as well as wherein the connection portion extends a length from the heating portion (Fig. 3) and the circuit element generally runs parallel to a centerline of the length of the connector portion (Fig. 3), wherein the outer layer (diffuser 312) in the connection portion does not extend outwardly from the centerline as much as the inner layer (heating plate 31) extends from the centerline of the connection portion (Fig. 3).
Regarding claim 28, Tuan teaches the apparatus of claim 21 as well as wherein the heating circuit is made from an electrical conducting material, wherein the electrical conducting material is selected from electrical conducting ink ([0034] which states in part “the heating plate 31 is printed with a silver paste to form a heating circuit pattern 311…”).
Regarding claim 33, Tuan teaches the apparatus of claim 21 as well as a support layer (41), wherein the heating element is arranged on the support layer (Fig. 3).
Regarding claim 35, Tuan teaches the apparatus of claim 33 as well as circuit layer (30) on the support layer (Fig. 3), wherein the heating circuit is arranged on the circuit layer prior to the circuit layer being secured to the support layer (Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698; 227 USPQ 964, 966 (Fed. Cir. 1985).).
Claim(s) 21, 22, 29, 32 and 36-39 is/are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by US 2019/0099290 to Thomas et al. (Thomas).
Regarding claim 21, Thomas teaches an apparatus (title “Thermal Devices” and thermal device 100-3, Figs. 19A-19F) comprising an electrical source ([0182] which stats in part “the battery housing 1904 may also include device electronics. Accordingly, the battery housing 1904 may also be referred to as a “battery and electronics housing 1904.””) comprising an outer shell (battery and electronics housing 1904), a battery arranged within the outer shell ([0182] which states in part “The battery housing 1904 includes a battery (not shown).”), and at least one electrical connector electrically connected to the battery ([0185]) which states in part “the battery housing includes a first rigid PCB 1916 and a first flexible PCB 1918 that are connected to one another…The first flexible PCB 1918 includes electrical traces that connect the battery to the electronics includes on the first rigid PCB 1916.”), and a circuit board (thermal bridge/reservoir material 1914 in combination with package substrate 1902 and thermal units 1900) comprising an inner layer (package substrate 1902), an outer layer (thermal bridge/reservoir material 1914), a heating portion ([0181] which states in part “The thermal device 100-3 includes thermal units 1900 attached to a package substrate 1902.) comprising a heating circuit (thermal units 1900) arranged between the outer and inner layer of the circuit board (Figs. 19A-19D), and a connection portion (second rigid PCB 1924 and second flexible PCB 1922) between the outer layer and the inner layer of the circuit board (Figs. 19A-19F) extending from the heating portion (Fig. 19F), wherein a circuit element (electrical contacts 1932) extends from between the inner layer and outer layer and is configured to electrically connect the heating circuit to the electrical connector ([0187] which states in part “The second flexible PCB 1922 also includes electrical contacts 1932 that solder to electrical contacts of thermal elements 1900.”).
Regarding claim 22, Thomas teaches the apparatus of claim 21 as well as a plurality of mounting holes (indentations 1908) in either the outer shell (Fig. 19C) or the connector portion and a plurality of mounting pins (retention clips 1910) in the other of the outer shell or the connector portion (receptacle 1906), wherein when the mounting pins are received in the mounting holes, the circuit element is electrically coupled to the electrical connector ([0183] which states in part “The battery housing 1904 mates with a receptacle 1906.” And [0188] which states in part “The second flexible PCB 1922 includes electrical contact 1934…that electrically couple the battery and electronics included in the battery housing 1904 to the device electronics included on the second flexible PCB 1922 and the second rigid PCB 1924.”).
Regarding claim 29, Thomas teaches the apparatus of claim 21 as well as wherein the electrical source comprises a control unit, a battery a switch and a sensor ([0189] which states “As another example, the battery housing 1904 may include additional device electronics, such as device electronics included in communication module 1004, processing module 1002, memory 1020, temperature sensing module 1012, thermal control module 1010, and interface module 1006.”).
Regarding claim 32, Thomas teaches the apparatus of claim 21 as well as wherein the circuit element comprises exposed leads ([0187] which states in part “The second flexible PCB 1922 also includes electrical contacts 1932 that solder to electrical contacts of thermal elements 1900.”).
Regarding claim 36, Thomas teaches an apparatus (title “Thermal Devices” and thermal device 100-3, Figs. 19A-19F) comprising an electrical source ([0182] which stats in part “the battery housing 1904 may also include device electronics. Accordingly, the battery housing 1904 may also be referred to as a “battery and electronics housing 1904.””) comprising an outer shell (battery and electronics housing 1904), a battery arranged within the outer shell ([0182] which states in part “The battery housing 1904 includes a battery (not shown).”), and at least one electrical connector electrically connected to the battery and extending through the outer shell ([0185]) which states in part “the battery housing includes a first rigid PCB 1916 and a first flexible PCB 1918 that are connected to one another…The first flexible PCB 1918 includes electrical traces that connect the battery to the electronics includes on the first rigid PCB 1916.” As can be seen in Fig. 19F the electrical connectors extend within the house and therefore as broadly as claimed through the housing), and a circuit board (thermal bridge/reservoir material 1914 in combination with package substrate 1902 and thermal units 1900) comprising an outer surface (thermal bridge/reservoir material 1914), an inner surface (package substrate 1902), a connector portion (second rigid PCB 1924 and second flexible PCB 1922), a heating portion ([0181] which states in part “The thermal device 100-3 includes thermal units 1900 attached to a package substrate 1902.) comprising a heating circuit (thermal units 1900) extending within the heating portion and to the connector portion (Figs. 19C-19D), and at least one circuit element (thermal unit 1902), a plurality of mounting holes (indentations 1908) in either the outer shell (Fig. 19C) or the connector portion, and a plurality of mounting pins (retention clips 1910) in the other of the outer shell or the connector portion (Fig. 19C), wherein when the mounting pins are received in the mounting holes, the circuit element is electrically coupled to the electrical connector ([0183] which states in part “The battery housing 1904 mates with a receptacle 1906.” And [0188] which states in part “The second flexible PCB 1922 includes electrical contact 1934…that electrically couples the battery and electronics included in the battery housing 1904 to the device electronics included on the second flexible PCB 1922 and the second rigid PCB 1924.”).
Regarding claim 37, Thomas teaches the apparatus of claim 36 as well as wherein the connector portion extends a length from the heating portion (Fig. 19F) and the circuit element runs generally parallel to a centerline of the length of the connector portion (Fig. 19F), wherein an outer layer in the connection portion (wider part that includes electrical contacts 1932) does not extend outwardly from the centerline as much as an inner layer in the connection portion (narrower part that includes temperature sensors 128) extends from the centerline (Fig. 19F).
Regarding claim 38, Thomas teaches an apparatus (title “Thermal Devices” and thermal device 100-3, Figs. 19A-19F) comprising an electrical source ([0182] which stats in part “the battery housing 1904 may also include device electronics. Accordingly, the battery housing 1904 may also be referred to as a “battery and electronics housing 1904.””), a support plate (receptacle 1906) connected to the outer shell ([0183] which states in part “The battery housing 1904 mates with a receptacle 1906.”), a battery arranged within the outer shell ([0182] which states in part “The battery housing 1904 includes a battery (not shown).”), and at least one electrical connector electrically connected to the battery and extending through the outer shell ([0185]) which states in part “the battery housing includes a first rigid PCB 1916 and a first flexible PCB 1918 that are connected to one another…The first flexible PCB 1918 includes electrical traces that connect the battery to the electronics includes on the first rigid PCB 1916.” As can be seen in Fig. 19F the electrical connectors extend within the house and therefore as broadly as claimed through the housing), and a circuit board (thermal bridge/reservoir material 1914 in combination with package substrate 1902 and thermal units 1900) comprising at least one circuit element (thermal unit 1900), wherein the electrical connector of the electrical source is electrically coupled to the circuit element of the circuit board ([0188] which states in part “The second flexible PCB 1922 includes electrical contact 1934…that electrically couples the battery and electronics included in the battery housing 1904 to the device electronics included on the second flexible PCB 1922 and the second rigid PCB 1924.”).
Regarding claim 39, Thomas teaches the apparatus of claim 38 as well as a plurality of mounting holes (indentations 1908) in either the outer shell (Fig. 19C) or a connector portion and a plurality of mounting pins (retention clips 1910) in the other of the outer shell or the connector portion (side part of receptacle 1906 where retention clips 1910 are located), wherein when the mounting pins are received in the mounting holes, the circuit element is electrically coupled to the electrical connector ([0183] which states in part “The battery housing 1904 mates with a receptacle 1906.” And [0188] which states in part “The second flexible PCB 1922 includes electrical contact 1934…that electrically couple the battery and electronics included in the battery housing 1904 to the device electronics included on the second flexible PCB 1922 and the second rigid PCB 1924.”).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 26, 27, 30 and 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thomas.
Regarding claim 26, Thomas teaches the apparatus of claim 21 as well as in general wherein the circuit board is flexible ([0065] which states in part “the thermal units may be arranged on a flexible package substrate that allows the overall thermal device to be flexible.” And [0066-0067]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Figs. 19A-19F to use a flexible package substrate to allow for the device to be flexed as taught by Thomas to allow for the overall thermal apparatus to conform to the user’s body during use ([0065]).
Regarding claim 27, Thomas teaches the apparatus of claim 21 as well as in general wherein the heating circuit is flexible ([0066] which states in part “flexibility of the thermal device may be increased through the user of flexible thermal units since the thermal device may flex in areas between the thermal units and also in those area including the thermal units.”). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Figs. 19A-19F to use a flexible hating circuit to allow for the device to be flexed as taught by Thomas to allow for the overall thermal apparatus to conform to the user’s body during use ([0065]).
Regarding claims 30 and 31, Thomas teaches the apparatus of claim 21, but not specifically wherein the outer shell is rigid and made from plastic. Thomas does teach that outer shell (battery and electronics housing 1904) slides into receptacle (1906), is retained in position, and slides out of the receptacle (1906) when the user applied force to the outer shell (battery and electronics housing 1904). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected a rigid plastic material for the outer shell, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended sue as a matter of obvious design choice.
Claim(s) 34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tuan in view of Thomas.
Regarding claim 34, Tuan teaches the apparatus of claim 33, but is silent with respect to wherein the support layer is flexible. Thomas teaches an analogous device (title “Thermal Devices” and thermal device 100-3, Figs. 19A-19F) to that of Tuan as well as the flexibility in the package substrate may allow the package substrate, and overall thermal device, to conform to the user’s body during use ([0065]). Thomas additionally teaches that portions of the package substate may be made rigid, while other portions may be flexible ([0067]). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Tuan with the flexible material of Thomas to allow for the device to conform to the user’s body during use as taught by Thomas ([0065-0067]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KAITLYN E SMITH whose telephone number is (571)270-5845. The examiner can normally be reached Monday-Friday 9am-5pm.
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/KAITLYN E SMITH/Primary Examiner, Art Unit 3794