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 .
Election/Restrictions/Remarks
The amendment filed on 01/06/25 has been fully considered and made of record.
Applicants’ amendment has added new issues, which then necessitate new ground of Restriction presented in this Office action.
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-15, 17, 18 and 21, drawn to an information handling system, classified in class 29, subclass 701 (Y10T29/53004) (MPEP 806.05(i));
II. Claims 19-20, drawn to a method for thermal management of an information handling system, classified in class 29, subclass 832 (Y10T29/4913).
The inventions are distinct, each from the other because of the following reasons:
Inventions II and I are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case the process as claimed can be practiced by another materially different apparatus such as disposing to a hot spot.
Restriction for examination purposes as indicated is proper because all these inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and examination burden if restriction were not required because one or more of the following reasons apply:
(a) the inventions have acquired a separate status in the art in view of their different classification;
(b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter;
(c) the inventions require a different field of search (for example, searching
different classes/subclasses or electronic resources, or employing different search
queries);
(d) the prior art applicable to one invention would not likely be applicable to another invention;
(e) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
If applicant elects the invention of Group I, a further Restriction is required:
Species I-A: an embodiment of an information handling system with the exclusive limitations of furthering the porous layer, Claims 2, 3, 8, 9, 15 & 21;
Species I-B: an embodiment of an information handling system with the exclusive limitations of an additional layer, Claims 4 & 5;
Species I-C: an embodiment of an information handling system with the exclusive limitations of further disposing the thermal management structure, Claims 6 & 7;
Species I-D: an embodiment of an information handling system with the exclusive limitations of forming the outer housing, Claim 10.
Species I-E: an embodiment of a method for manufacturing an information handling system with the exclusive limitations of further forming the outer housing, Claims 12-14;
Species I-F: an embodiment of a method for manufacturing an information handling system with the exclusive limitations of furthering the structural of the porous layer, Claim 17;
Species I-G: an embodiment of a method for manufacturing an information handling system with the exclusive limitations of a hot spot, Claim 18.
This application contains claims directed to the following patentably distinct species: I-A to I-G. The species are independent or distinct because claims to the different species recite the mutually exclusive characteristics of such species (MPEP 806.04(f)). In addition, these species are not obvious variants of each other based on the current record.
Applicants are required under 35 U.S.C. 121 to elect a single disclosed species for prosecution on the merits to which the claims shall be restricted (Group I) if no generic claim is finally held to be allowable. Currently, it appears that each of Claims 1 and 11 is generic only for each of Inventions I and II.
There is an examination and search burden for these patentably distinct species due to their mutually exclusive characteristics. The species require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search queries); and/or the prior art applicable to one species would not likely be applicable to another species; and/or the species are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
Upon the allowance of a generic claim in each Group I, applicants will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim in that Group, as provided by 37 CFR 1.141.
Applicants are advised that the reply to this requirement to be complete must include (i) an election of an invention or species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention or species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
The election of the invention or species may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of invention or species requirement, the election shall be treated as an election without traverse.
Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected invention or species.
Should applicants traverse on the ground that the inventions or species are not patentably distinct, applicants should submit evidence or identify such evidence now of record showing the invention or species to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the invention or species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103(a) of the other inventions or species.
Applicants are reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
Applicants’ election with traverse of Species I-A (Claims 2, 3, 8, 9, 15 & 21) filed on 5/29/25 is acknowledged. First, the traversal is on the grounds that the Species I-A to I-G should be grouped together (Remarks, page 5) because there is no burden to create the species restriction. In response, the different Species I-A to I-G are mutually exclusive as defined in the Restriction (3/31/25) and MPEP 806.04(f) , where “claims to different species are mutually exclusive if one claim recites limitations disclosed for a first species but not a second, while a second claim recites limitations disclosed only for the second species and not the first.”. Therefore, Species I-A to I-G are mutually exclusive.
Applicants further traverse that the identified claim sets are not proper species because they do not recite mutually exclusive characteristics as they are capable of use together such as in Fig. 5A (Remarks, page 4). Again, applicant are advised to revisit MPEP 806.04(f) to understand the mutually exclusive characteristics, as provided above and in the Restriction (3/31/25) and there is no requirement that the Restriction must be processed in view of the drawings.
In accordance with MPEP § 803, the examiner has demonstrated that the inventions of Species I-A to I-G are each distinct as claimed (filed on 3/31/25) and a serious burden would be placed on the examiner (MPEP 808.01(a)).
It appears that the applicants assert the Claimed Inventions/Species in view of the Specification (against MPEP 2111), by reading the whole Specification and the drawings into the Claims to define the Claimed Invention, regardless of the different claimed limitation of the Group/Species restriction.
Moreover, applicants should response to the Restriction (3/31/25), Page 7, 2nd Paragraph, by declaring that all the Species are just obvious variants, in order to have all the claims of all Species prosecuted, as declared in the Restriction.
In summary, the Requirement is still deemed proper and is therefore made FINAL. Claims 4-7, 10-15 and 17-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected Species/Groups.
Applicants are required to cancel these nonelected Claims (4-7, 10-15 and 17-20) or take other appropriate action.
An Office Action on the merits of Claims 1-3, 8, 9, 11, 15 and 21 now follows.
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.
Claims 1-3, 8, 9, 11 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Khateeb Razack (US 2022/0158273).
Regarding claims 1 & 11, Khateeb Razack teaches an information handling system or portable electronic (Abstract) comprising:
an outer housing (Fig. 5, 40); and
a thermal management structure (42) disposed adjacent to an inner lateral surface of the outer housing, the thermal management structure comprising a porous layer configured to increase thermal resistance (Para. 0194) in a first direction orthogonal to the inner lateral surface of the outer housing (42).
Regarding claim 2, Khateeb Razack teaches that the porous layer includes a metal honeycomb structure or metallized porosity (Para. 0060).
Regarding claim 3, Khateeb Razack teaches that the porous layer comprises a metal foam (Para. 0223, line 4).
Regarding claim 8, Khateeb Razack teaches that the porous layer is approximately 0.2 millimeters to 0.4 millimeters thick (Para. 0055).
Regarding claim 9, Khateeb Razack teaches that the porous layer has a porosity greater than 20% and less than 85% (Para. 0058).
Allowable Subject Matter
Claim 21 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicants’ disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THIEM D PHAN whose telephone number is (571)272-4568. The examiner can normally be reached on Mo-Fr: 8AM-4PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil Singh, can be reached on 571-272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/THIEM D PHAN/Primary Examiner, Art Unit 3729
June 28, 2025
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