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 .
Response to Amendment
This action is responsive to Applicant’s amendment and response filed March 24, 2026.
Claims 1–22 are pending. Claims 1–4, 6–11 and 13–15 have been amended, and claims 20–22 have been added. Claims 3–9 and 16–19 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a non-elected invention and a non-elected species. Claims 1, 2, 10–15 and 20–22 are under examination.
Election/Restrictions
Applicant’s election of Invention I and Species G in the reply filed 11/27/2024 was acknowledged in the Office action mailed on September 24, 2025. Claims 3–9 and 16–19 remain withdrawn. At footnote 1 of the response, Applicant asserts that the acknowledgment of an election “without traverse” was in error because Applicant traversed the election of species requirement, and that “[t]o date, no response has been provided” to that traversal. This assertion is respectfully not accurate. The traversal of the species requirement was expressly addressed at pages 2-3 of the Office action mailed on September 24, 2025, which explained that each species comprises an independent and distinct cooling apparatus having mutually exclusive features that would require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries), that the prior art applicable to one invention would not likely be applicable to another, and that the inventions are likely to raise different non-prior-art issues under 35 U.S.C. 101 and 35 U.S.C. 112(a). The requirement was thereupon made FINAL. The traversal has therefore been considered and answered, and the requirement is maintained as FINAL.
With respect to the request for rejoinder of claims 3–9: rejoinder of withdrawn claims occurs upon the allowance of a linking claim, or of a generic or allowable claim from which the withdrawn claims depend. See MPEP § 821.04. Because claim 1 stands rejected herein, no such allowable claim is presently of record and rejoinder is not appropriate at this time. Should claim 1 subsequently be found allowable, withdrawn apparatus claims 3–9 will be considered for rejoinder, and withdrawn method claims 16–19 will be considered for rejoinder to the extent they require all the limitations of an allowable apparatus claim. See MPEP § 821.04(b).
Claim Objections
Claims 1 and 20–22 are objected to because of the following informalities:
Claim 1 recites “one or more thermoelectric cooler(s)” and “said heatsink(s).” The parenthetical plural form obscures whether the singular or plural is intended. Appropriate correction to “one or more thermoelectric coolers” and “the one or more heatsinks” is required throughout the claim set.
Claim 20 recites “a water holding capacity that is at least two times its dry basis.” The specification refers to a water holding capacity of “at least two times … the dry weight” (¶ 0080 of US 2022/0390151 A1). Appropriate correction is required. See also the rejections under 35 U.S.C. 112(a) and 112(b) below.
Claim 21 recites “has a water channel resting on the face,” whereas claims 1, 13, 14 and 15 recite a “liquid channel.” Consistent terminology is required.
Claim 22 recites “where the liquid cannel formed as ….” The term “cannel” appears to be a typographical error for “channel,” and “where” should read “wherein.” 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 1, 2, 10–15 and 20–22 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Amended claim 1 requires that the one or more liquid channels be “installed in an interior of the portable cooling vented apparatus in proximity to, or within, said heatsink(s).” The alternative in which the liquid channel is located within the heatsink is not enabled. The entirety of the disclosure directed to this alternative is a single sentence at ¶ 0066 of US 2022/0390151 A1, stating that the tubing may partially or entirely pass through internal liquid channels within the heatsinks and that this can eliminate the need for external drippers as the liquid oozes or seeps out of the pores in the heatsinks. No structure, dimension, porosity, fabrication method, sealing arrangement, or means of feeding such internal channels is disclosed, no figure depicts the arrangement, and no working example employs it.
Considering the factors set forth in In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988): the breadth of the claims encompasses any heatsink of any geometry provided with internal liquid channels; the quantity of experimentation necessary to arrive at a heatsink that both conducts heat from the thermoelectric array and delivers liquid through its own body at a controlled rate is substantial; the amount of direction provided by the inventor is limited to the single conclusory sentence identified above; there are no working examples of this alternative; and the state of the prior art does not supply the missing structure, Applicant’s own disclosure characterizing the arrangement only as a possibility. Accordingly, undue experimentation would be required to practice the full scope of the claimed subject matter. See MPEP §§ 2164.01(a) and 2164.08.
Claim 20 is further rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. Claim 20 recites a water holding capacity that is “at least two times its dry basis.” The specification describes a water holding capacity of at least two times, e.g., three times, the dry weight (¶ 0080). To the extent “dry basis” denotes a quantity other than dry weight, the limitation constitutes new matter not supported by the original disclosure. Applicant is required to cancel the new matter in the reply to this Office action.
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.
Claims 1, 2, 10–15 and 20–22 are 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 1 recites “connected to said reservoir” in the third element. The claim earlier recites “at least one reservoir.” It is therefore unclear whether “said reservoir” refers to all of the at least one reservoir or to a single one of them. The limitation should read ––said at least one reservoir––. This issue was raised in the prior Office action and was corrected in claims 2 and 3 but not in claim 1.
Claim 1 recites “in proximity to, or within, said heatsink(s)” in the third element, whereas the same element earlier recites “the one or more heatsinks.” It is unclear whether “said heatsink(s)” refers to all of the one or more heatsinks or to a subset thereof. The limitation should read ––the one or more heatsinks––. Appropriate correction is required throughout the claim set.
Claim 1 recites “the vapor can escape to the surroundings.” The permissive term “can” renders it unclear whether the claim requires structure through which vapor escapes, or merely recites a possibility that need not be realized. See MPEP § 2173.05(d). The limitation should be recast in definite terms, for example --the apparatus is configured such that vapor formed at the hot side escapes to the surroundings--.
Claim 2 recites that the at least one reservoir is in the form of a liquid-absorbing layer attached to the heatsink(s). Amended claim 1 requires that the reservoir supply liquid to the one or more heatsinks “aided by one or more liquid channels connected to said reservoir and installed in an interior of the portable cooling vented apparatus in proximity to, or within, said heatsink(s).” It is unclear how a liquid-absorbing layer that is itself attached to the heatsinks is also connected to liquid channels that are separately installed in the interior of the apparatus in proximity to those same heatsinks, or what structure the liquid channels of claim 1 take in the embodiment of claim 2. The metes and bounds of claim 2 cannot be determined. It is noted that the deletion of the phrase “by being adjoined to the heatsink(s) and/or with the aid of” from claim 1 has made the liquid channels a mandatory element of every claim in the set, which appears to be the source of the inconsistency.
Claim 11 recites “for use in combination with a garment.” It is unclear whether the garment is a positively recited element of the claimed apparatus and, if so, what structural relationship is required between the apparatus and the garment. Is the apparatus integrated into the garment, secured to it, or merely capable of being placed adjacent to it? Clarification is required. See also the rejection under 35 U.S.C. 112(d) below.
Claim 12 recites “for use within a cooling box, a chair cushion, a helmet or a bike handle,” and is indefinite for the same reason as claim 11. It is unclear whether the recited articles are positively claimed elements and what structural relationship, if any, is required.
Claim 13 recites “a narrow piece of wettable, liquid-absorbing material.” The term “narrow” is a relative term of degree that renders the claim indefinite. The term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The specification recites exemplary widths of 1 to 10 mm at ¶ 0081, but expressly presents them by way of example only. See MPEP § 2173.05(b)(II).
Claim 13 recites “the at least one liquid reservoir.” There is insufficient antecedent basis for this limitation in the claim. Claim 1 recites “at least one reservoir,” not “at least one liquid reservoir.”
Claim 15 recites that the liquid channel “has a serpentine-like shape.” The term “serpentine-like” is a term of approximation of indeterminate scope; it is unclear what degree of departure from a serpentine shape remains within the claim. See MPEP § 2173.05(b)(III)–(IV).
Claim 20 recites “a water holding capacity that is at least two times its dry basis.” It is unclear what quantity “its dry basis” refers to, and no measurement standard or test condition is specified by which water holding capacity is to be determined.
Claim 21 recites that each heatsink “has a water channel resting on the face.” It is unclear whether this water channel is the same as the liquid channel required by claims 1, 13, 14 and 15, from which claim 21 ultimately depends, or an additional and distinct channel. Claim 21 further recites “such that the water channel touches and wets the fins directly, resulting in evaporation of water to open atmosphere,” which is a recitation of the result of operation rather than of structure, and it is unclear what further structural limitation, if any, is thereby imposed.
Claim 22 recites “a strip made of a suitable cloth.” The term “suitable” is indefinite because the claim provides no standard by which suitability is to be determined. See MPEP § 2173.05(b).
Claims 10 and 14 are also rejected under 35 U.S.C. 112(b) for depending upon a rejected base claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 11 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 11 was amended to replace “combined with a garment” with “for use in combination with a garment.” As amended, the claim recites only an intended use of the apparatus of claim 1 and adds no structural limitation to that apparatus. A recitation of intended use in an apparatus claim must result in a structural difference between the claimed apparatus and the prior art in order to patentably distinguish; where the body of the claim recites no such structure, the intended use does not further limit the claim. See MPEP §§ 2111.02(II) and 2114(II); In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Applicant may obviate this rejection by reciting the structural relationship between the apparatus and the garment. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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.
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, 2 and 10–12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Vistakula (WO 2013/124866 A2).
In regard to claim 1, Vistakula teaches a portable cooling vented apparatus (device 40 incorporated into an item of apparel 80 and powered by a battery and switched electrical connection) comprising:
an array made of one or more thermoelectric coolers (thermoelectric module TEM 42; a jacket may include multiple TEM devices, up to about 30), each thermoelectric cooler having a cold side (56) and a hot side (49), wherein the cold sides and the hot sides of all the thermoelectric coolers define cold and hot sides of the array, respectively (¶¶ 0011, 0024–0025, 0028–0029, 0040, 0050; figs. 1–3, 8);
one or more heatsinks (heat sink 44, a thin sheet or plate of aluminum, copper, magnesium or an aluminum alloy having a wet side 50 and a dry side 58, which may include one or more fins for heat removal) at the hot side (49) of the array (heat sink 44 is thermally coupled to the hot side 49 of the TEM 42 by a conductive grease or adhesive) (¶¶ 0028, 0030–0031; figs. 2, 4, 8); and
at least one reservoir (supply tank 90, which is configured to contain the cooling liquid; and wetting material 46, in which about 8 ml of cooling liquid may be stored for each TEM device) configured to supply liquid (cooling liquid, e.g., water) to the one or more heatsinks (44), aided by one or more liquid channels (supply line 92, which may include or consist of a tube and/or a wicking material such as a hydrophilic fabric or foam) connected to said reservoir (supply line 92 connects the wetting material 46 and the supply tank 90) and installed in an interior of the portable cooling vented apparatus (supply line 92 is disposed between the inner layer 82 and the outer layer 86 of the apparel 80) in proximity to said heatsinks (supply line 92 delivers the cooling liquid to the wetting material 46, which is disposed on and covers at least a portion of the wet side 50 of the heat sink 44) (¶¶ 0009, 0028, 0035, 0042–0044, 0046, 0050; figs. 2, 8, 9);
wherein the apparatus is open to surroundings, such that when vapor is formed in the hot side, the vapor can escape to the surroundings (binding layer 52 is an aluminum, polyester or nylon mesh or like breathable structure placed over the wetting material 46; the outer layer 86 of the apparel 80 is porous or breathable to allow evaporated cooling liquid to pass through to the surrounding air; in an alternative embodiment the apparel 80 does not include the outer layer 86 so that the binding layer 52 and/or the wetting material 46 are directly exposed to the surrounding air; the evaporated cooling liquid enters the surrounding air) (¶¶ 0028, 0041, 0046, 0049; figs. 2, 8).
In regard to claim 2, Vistakula teaches the portable cooling apparatus of claim 1 wherein the at least one reservoir is in the form of a liquid-absorbing layer (wetting material 46, a hydrophilic material such as tissue, cotton, a cellulosic material, a foam material, a polymer water soaking material or a water soaking fabric, which absorbs and holds the cooling liquid and in which about 8 ml of cooling liquid may be stored for each TEM device) attached to the heatsinks (disposed on and covering at least a portion of the wet side 50 of the heat sink 44 and firmly attached thereto by binding layer 52) (¶¶ 0028, 0035, 0044, 0046, 0050; figs. 2, 9). It is further noted that Vistakula satisfies the limitations of claims 1 and 2 in a single embodiment, because the supply line 92 of the liquid channel is expressly described as connecting the wetting material 46 and the supply tank 90 (¶¶ 0009, 0042; fig. 9).
In regard to claim 10, Vistakula teaches the portable cooling apparatus of claim 1 wherein the hot side of the array is at least partially uncovered or covered with a gas-permeable cover (binding layer 52 in the form of an aluminum, polyester or nylon mesh or like breathable structure; alternatively the apparel 80 omits the outer layer 86 so that the binding layer 52 and/or the wetting material 46 are directly exposed to the surrounding air), such that vapors that form in the hot side of the array escape to the surroundings (the evaporated cooling liquid enters the surrounding air) (¶¶ 0028, 0041, 0046, 0049; figs. 2, 8).
In regard to claim 11, Vistakula teaches the portable cooling apparatus of claim 1 for use in combination with a garment (the device 40 is incorporated into an item of apparel 80 such as a cooling jacket, a jacket, a neck wrap, clothing or footwear, with the device 40 positioned within the apparel 80 such that the cold side 56 of the TEM 42 contacts the user when the apparel 80 is worn) (¶¶ 0011, 0040–0041; fig. 8).
In regard to claim 12, Vistakula teaches the portable cooling apparatus of claim 1 for use within a cooling box, a chair cushion, a helmet or a bike handle (the item of apparel into which the device 40 is incorporated may be a helmet, a hard hat, a construction helmet, a motor cycle helmet, a bicycle helmet, a chair, a seat such as a car seat, a steering wheel, or an armrest) (¶¶ 0011, 0040). It is further noted that this limitation is a recitation of intended use that imposes no structural limitation on the apparatus of claim 1. See MPEP § 2114(II).
Claim Rejections - 35 USC § 103
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.
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.
Claims 13, 14, 20 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Vistakula (WO 2013/124866 A2).
In regard to claim 13, Vistakula teaches the portable cooling apparatus of claim 1 wherein the one or more liquid channels comprises a liquid channel formed as a narrow piece of wettable, liquid-absorbing material (supply line 92, which may include or consist of a wicking material such as a hydrophilic fabric or foam) emerging from the at least one liquid reservoir (supply tank 90, which contains the cooling liquid) and conveying that liquid to the wetting material 46 disposed on the wet side 50 of the heat sink 44 (¶¶ 0009, 0028, 0042; figs. 2, 9).
Vistakula does not explicitly teach that the wicking supply line is itself in contact with the one or more heatsinks, as distinct from being in contact with the wetting material carried on the heatsink; FIG. 9 depicts the supply line 92 terminating at the wetting material 46.
However, Vistakula teaches that heat is rejected from the heat sink 44 by evaporating the cooling liquid from material disposed on the heat sink rather than by convection alone (¶¶ 0045–0046), that the etched surface of the heat sink 44 enhances heat transfer to the liquid in the proximate wetting material 46 (¶ 0034), and that the heat transfer rates due to evaporative cooling of the cooling liquid from the wetting material equal or exceed those due to radiative or convective heat transfer (¶ 0052). Vistakula thereby teaches that the governing heat-rejection mechanism is evaporation of liquid held against the heat sink surface. Vistakula further teaches that the wetting material 46 is only about 1 mm to about 3 mm thick and lies directly on the wet side 50 of the heat sink 44 (¶¶ 0010, 0028), so that the terminus of the supply line 92 lies immediately at the heat sink surface.
Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to arrange the wicking supply line (92) of Vistakula in direct contact with the heat sink (44), for the purpose of delivering the cooling liquid directly to the heat-rejecting surface at which evaporation occurs and thereby maximizing the evaporative heat transfer rate that Vistakula identifies as the governing heat-rejection mechanism (¶¶ 0034, 0045–0046, 0052). Such an arrangement is no more than the combination of known elements according to known methods to yield the predictable result of improved heat rejection, and would have involved nothing more than routine skill. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
In regard to claim 14, Vistakula teaches the portable cooling apparatus of claim 13 wherein the liquid channel formed as the narrow piece of wettable, liquid-absorbing material (supply line 92 comprising a wicking material) conveys liquid from the at least one reservoir (supply tank 90) to the wetting material (46) by wicking, that is, by capillary action (¶¶ 0009, 0013, 0042; fig. 9).
Vistakula does not explicitly state that one end of the wicking material is immersed in the supply tank.
However, Vistakula requires that the wicking material convey the liquid from the supply tank to the wetting material (¶¶ 0009, 0013, 0042). Capillary transport necessarily requires that the wick be in contact with the body of liquid to be transported; a wick spaced apart from the liquid in the tank cannot perform the conveying function Vistakula assigns to it.
Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to place one end of the wicking supply line (92) of Vistakula in immersion within the cooling liquid held in the supply tank (90), to enable liquid flow therealong via capillary action, for the purpose of achieving the continuous liquid conveyance from tank to wetting material that Vistakula expressly requires and thereby providing the four hours of continuous cooling from an 8 ml supply tank that Vistakula reports (¶ 0050). This is the ordinary and predictable manner of operating a wick drawing from a reservoir, and yields no more than the expected result. See KSR, 550 U.S. at 416; MPEP § 2144.01.
In regard to claim 20, Vistakula teaches the portable cooling apparatus of claim 13 wherein the liquid channel formed as the narrow piece of wettable, liquid-absorbing material is made of liquid-absorbing material (supply line 92 comprising a wicking material such as a hydrophilic fabric or foam; the wetting material 46 to which it delivers is tissue, cotton, a cellulosic material, a foam material, a polymer water soaking material or a water soaking fabric) that enables capillary rise of water (the wicking material conveys the cooling liquid from the supply tank 90 to the wetting material 46 by wicking) (¶¶ 0009, 0013, 0035, 0042; fig. 9).
Vistakula does not explicitly recite a water holding capacity that is at least two times the dry weight of the material.
However, where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established, and the burden shifts to the applicant to show that the prior art product does not necessarily or inherently possess the characteristics of the claimed product. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977); In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980); MPEP § 2112.01(I)–(II). Vistakula teaches the same class of hydrophilic cellulosic, cotton, foam and water-soaking fabric materials that the present specification identifies as suitable (compare ¶ 0035 of Vistakula with ¶¶ 0016 and 0077 of US 2022/0390151 A1). A reasonable basis exists for concluding that these materials possess the recited capacity: Vistakula teaches evaporation rates of about 2 ml/hour to about 60 ml/hour and states that the wetting material may hold enough cooling liquid for about 10 minutes to about eight hours of evaporative cooling, and that about 8 ml of cooling liquid may be stored in the wetting material for each TEM device (¶ 0050), while the wetting material itself is a layer of tissue or cotton of about 1 mm to about 3 mm thickness over a heat sink surface area of about 2500 mm² (¶¶ 0010, 0030, 0035). A material holding that quantity of liquid necessarily holds several times its own dry weight. Alternatively, the water holding capacity of the wicking material is a result-effective variable governing the duration of evaporative cooling available between replenishments, which Vistakula expressly addresses (¶ 0050), and it would have been obvious to optimize that capacity through routine experimentation. See MPEP § 2144.05(II).
Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to select for the wicking supply line (92) of Vistakula a liquid-absorbing material having a water holding capacity of at least two times its dry weight, for the purpose of extending the period of continuous evaporative cooling obtainable from a given quantity of stored liquid, which is the stated objective of the supply tank arrangement of Vistakula (¶ 0050).
In regard to claim 22, Vistakula teaches the portable cooling apparatus of claim 13 wherein the liquid channel formed as the narrow piece of wettable, liquid-absorbing material is a sponge strip, or a strip made of a suitable cloth (the supply line 92 may include or consist of a wicking material such as a hydrophilic fabric, corresponding to a cloth strip, or a foam, corresponding to a sponge strip) (¶ 0042; fig. 9). To the extent the recitation of a strip is argued to require a particular elongate form not expressly disclosed, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to form the wicking supply line (92) of Vistakula as an elongate strip, for the purpose of spanning the distance between the supply tank (90), which may be secured to an inner surface of a cooling jacket, and the wetting material (46) at the heat sink (44), while minimizing the mass of liquid retained in transit (¶ 0042). This is a change in configuration that yields no more than predictable results. See In re Dailey, 357 F.2d 669, 672 (CCPA 1966); MPEP § 2144.04(IV)(B).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Vistakula (WO 2013/124866 A2) in view of Rittman et al. (US 2020/0008975 A1).
In regard to claim 15, Vistakula teaches the portable cooling apparatus of claim 14, including the liquid channel formed as the narrow piece of wettable, liquid-absorbing material (supply line 92 comprising a wicking material) extending from the supply tank (90) to the wetting material (46) carried on the heat sink (44) (¶¶ 0009, 0028, 0042; figs. 2, 9).
Vistakula does not explicitly teach that said liquid channel has a serpentine-like shape, curving in alternate directions on the one or more heatsinks.
However, Rittman teaches a thermal apparatus employing a Peltier device (230) with an associated finned heat sink (225), in which the fluid flow channel adjacent the Peltier device is provided as a serpentine channel (211) formed in the body (215) of a reservoir (210), and teaches that when fluid moves through the serpentine channel it is given prolonged exposure to the heating or cooling effects of the Peltier device (230) (¶¶ 0063, 0073; figs. 1C, 2B). Rittman further teaches routing a liquid conduit (heating conduit 261) over a finned heat sink (225) by disposing a first segment (263) between one set of fins (227) and a second segment (267) between a second set of fins (227), the two segments being joined at their remaining ends by a loop (266) so that the liquid reverses direction and passes back across the heat sink, whereby liquid passing through the conduit exchanges heat with the heat sink (¶ 0078; fig. 2E).
Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to form the wicking liquid channel (92) of Vistakula with a serpentine-like shape, curving in alternate directions on the heat sink (44), in view of the teaching of Rittman, for the purpose of prolonging the exposure of the conveyed liquid to the heat sink surface and distributing that liquid over a greater portion of the heat sink area (¶¶ 0063, 0078 of Rittman). Doing so directly serves the objective Vistakula pursues, namely maximizing the evaporative heat transfer by which the heat sink (44) rejects heat (¶¶ 0045–0046, 0052 of Vistakula). The modification amounts to a change in the configuration of a known liquid flow path to obtain the predictable result of increased liquid-to-heat-sink contact area and residence time. See MPEP § 2144.04(IV)(B).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Vistakula (WO 2013/124866 A2) in view of Rittman et al. (US 2020/0008975 A1) and further in view of Bhatti et al. (US 6,422,307 B1).
In regard to claim 21, Vistakula in view of Rittman teaches the portable cooling apparatus of claim 15 wherein each heatsink in the one or more heatsinks is a plate (heat sink 44 is a thin sheet or plate of aluminum, copper, magnesium or an aluminum alloy, having a wet side 50 and a dry side 58) having fins on a face thereof (the heat sink 44 may include one or more fins for heat removal), and has a water channel (supply line 92 comprising a wicking material, shaped in serpentine fashion per Rittman) resting on the face that curves in alternate directions, in spaces between the fins (Rittman: segments 263 and 267 of the conduit 261 are disposed between respective sets of fins 227 of the finned heat sink 225 and joined by loop 266 so that the liquid reverses direction), such that the water channel touches and wets the fins directly, resulting in evaporation of water to open atmosphere (the cooling liquid conveyed by the wicking material evaporates from the heat sink, and the evaporated cooling liquid enters the surrounding air through the breathable binding layer 52 or, where the outer layer 86 is omitted, directly) (Vistakula ¶¶ 0028, 0030–0031, 0041–0042, 0046, 0049; figs. 2, 4, 8, 9; Rittman ¶¶ 0063, 0078; figs. 2B, 2E).
Vistakula in view of Rittman does not explicitly teach that the fins are deployed in rows and columns on the face of the plate.
However, Bhatti teaches a metallic heat sink comprising a planar base (10) having a width (12) and a flow length (14) and a plurality of fins (22) protruding at an angle of about 90 degrees from one side of the planar base, wherein the fins are located on one side of the base plate and are arranged in columns and rows that define parallel channels for fluid flow, the fins being aligned face-to-face across the width to form parallel arrays that are arranged in series along the flow length with intervening gaps (26) between successive arrays (col. 1, ll. 11–14; col. 2, ll. 11–17; col. 7, ll. 4–6 and 30–37; claim 1; figs. 1, 2). Bhatti teaches that this arrangement provides a significantly larger heat transfer surface area packed within a smaller volume and a high heat transfer coefficient (col. 7, ll. 43–47), and that it is applicable to air-cooled heat sinks generally, including those having a fin density of about 3 to 10 fins per centimeter and a fin height of about 10 to 15 millimeters (col. 1, ll. 24–31).
Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to deploy the fins of the heat sink (44) of Vistakula in rows and columns on the wet side (50) of the plate, in view of the teaching of Bhatti, for the purpose of increasing the heat-transfer surface area available within the limited space of a wearable device, which is the express difficulty Vistakula identifies (¶¶ 0005, 0007), and for the purpose of defining parallel channels between the fins through which the serpentine liquid channel may be routed and through which air and evaporated liquid may pass (Bhatti, col. 7, ll. 30–37). The arrangement of fins in rows and columns on a base plate is a well-established heat sink geometry, and its adoption in the device of Vistakula would have yielded no more than the predictable results Bhatti attributes to it.
It is noted for completeness that Bhatti is relied upon for the arrangement of fins in rows and columns on a face of a base plate, and not for any particular fin density or fin spacing. The ultra-high fin densities of 12 to 32 fins per centimeter that characterize the preferred embodiment of Bhatti are not incorporated into the combination, and Bhatti itself identifies conventional air-cooled heat sinks having a fin density of about 3 to 10 fins per centimeter and a fin height of about 10 to 15 millimeters (col. 1, ll. 24–31), which readily accommodate a liquid channel routed between fin columns as taught by Rittman (¶ 0078; fig. 2E).
Remarks
Applicant is advised that the amendment deleting “by being adjoined to the heatsink(s) and/or with the aid of” from claim 1 has made the one or more liquid channels a required element of every pending apparatus claim. Applicant may wish to consider whether that consequence was intended, particularly in light of claim 2 and of elected Species G.
Response to Arguments
Applicant’s arguments with respect to the amended claims have been considered but are moot in view of the new ground(s) of rejection, unless otherwise noted below.
Applicant argues with respect to claim 11 (Remark P. 6) that the claim was amended to mirror claim 12, that “[s]ince claim 12 has not been rejected, claim 11 should not be either,” and that the issues raised relate to the breadth of the claim rather than to indefiniteness, citing MPEP § 2173.04.
In response, this argument is not persuasive for two reasons. First, the premise is incorrect: claim 12 was rejected under 35 U.S.C. 112(b) in the prior Office action as a claim depending from a rejected claim, and is rejected under 35 U.S.C. 112(b) on substantive grounds herein. Second, the rejection of claim 11 was not, and is not, premised on the breadth of the claim. The rejection is that the claim fails to make clear whether the garment is a positively recited element of the claimed apparatus and, if so, what structural relationship is required between the apparatus and the garment. That is a question of the metes and bounds of the claim, which is the proper subject of a rejection under § 112(b), and is distinct from the question of breadth addressed by MPEP § 2173.04. The amendment substituting “for use in combination with a garment” for “combined with a garment” has not resolved the ambiguity; it has instead converted the recitation into a statement of intended use, which gives rise to the additional rejection under 35 U.S.C. 112(d) set forth above.
Applicant argues (Remark P. 13) that the serpentine flow channel of Rittman is machined into a base substrate and is driven by a pump rather than by capillary flow, and is therefore not a narrow wettable liquid-absorbing material immersed in a liquid reservoir.
In response, this argument is not persuasive as applied to the present rejection. Rittman is relied upon only for the serpentine configuration of a liquid flow path deployed on and between the fins of a finned heat sink, and for the teaching that such a configuration prolongs the exposure of the liquid to the heat sink (¶¶ 0063, 0078). The wettable, liquid-absorbing character of the channel, its emergence from the reservoir, and its operation by capillary action are supplied by Vistakula (¶¶ 0009, 0013, 0042). One cannot show nonobviousness by attacking references individually where the rejection is based on a combination of references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Nor is the test for obviousness whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; the test is what the combined teachings would have suggested to one of ordinary skill in the art. In re Keller, 642 F.2d at 425; MPEP § 2145(IV). It is further noted that the present specification does not attribute criticality to the serpentine geometry as such. The specification identifies a tree-like shape, with branches of the wettable material distributed over the surface of the heatsink, as an equally useful alternative geometry (¶ 0078 of US 2022/0390151 A1), and characterizes the object of the geometry generally as maximizing contact of the water with the heatsink while maximizing evaporation to the surroundings (¶ 0077).
Applicant’s arguments (Remark P. 13) wherein applicant asserts that the experimental results reported in Examples 3A and 3B attest to the surprising efficiency of the design of claim 15, noting that the cold side temperature fell to 12 °C and 8 °C respectively from a 25 °C room temperature and remained stable for 77 minutes at 0.5 V and 1.15 A, with a 15 mm × 15 mm TEC and a heat sink only 9 mm in height.
In response, this evidence has been fully considered but is not persuasive, for the following reasons. First, the showing is not commensurate in scope with the claims. Examples 3A and 3B employ a single 15 mm × 15 mm TEC, a 20 mm × 20 mm × 9 mm anodized aluminum plate with 6.5 mm fins spaced 3 mm apart, a 9 ml plastic tank, a cloth strip of about 6 mm width and roughly 200 mm length, and operation at 0.5 V and 1.15 A in a 25 °C room (¶¶ 0090–0094 of US 2022/0390151 A1). Claim 15 is limited to none of these parameters; it recites an array of one or more thermoelectric coolers of any size operated at any voltage and current, one or more heatsinks of any material and geometry, a reservoir of any capacity, and a wettable liquid-absorbing channel of any dimension. Objective evidence of nonobviousness must be commensurate in scope with the claims it is offered to support. See MPEP § 716.02(d). Second, the showing does not compare the claimed subject matter with the closest prior art. Examples 3A and 3B compare two of Applicant’s own device configurations with one another; the record contains no comparison against any prior art device. A showing of unexpected results must be based on a comparison with the closest prior art. See MPEP § 716.02(e). Third, the record does not establish that the reported performance would have been unexpected to a person of ordinary skill in the art. The burden of establishing that results are unexpected, and that the difference is of both statistical and practical significance, rests with the applicant. See In re Soni, 54 F.3d 746, 751 (Fed. Cir. 1995); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972); MPEP § 716.02(b). Vistakula reports cold side temperatures in the range of about 4 °C to about 18 °C, and typically about 11 °C, for comparable wetted-heat-sink thermoelectric devices (¶¶ 0051 and Table 1). The results reported in Examples 3A and 3B fall within the range the prior art already reports for this class of device. Fourth, the prior art reports a longer duration of continuous operation than the showing relied upon. Vistakula teaches that a supply tank holding 8 ml of water provides four hours of continuous cooling for a single TEM device in a jacket, and that the wetting material may hold enough cooling liquid for about 10 minutes to about eight hours of evaporative cooling (¶ 0050). Examples 3A and 3B report stable operation for 77 minutes from a 9 ml tank (¶¶ 0090, 0094 of US 2022/0390151 A1). The showing therefore does not demonstrate that the claimed apparatus outperforms the closest prior art in the respect Applicant emphasizes.
Finally, evidence of secondary considerations must be weighed against the evidence of obviousness. See MPEP § 716.01(d). Having reweighed the totality of the record, the evidence of obviousness set forth above is not outweighed.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a). A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/W.M/Examiner, Art Unit 3763
/FRANTZ F JULES/Supervisory Patent Examiner, Art Unit 3763
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