DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. Claims 1-18 are presented for examination.
Claim Rejections - 35 USC § 101
3. 35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
3.1 Claims 1-18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 2A- Prong One
The claim(s) recite(s) a method, …, of generating a heatsink configuration of a heatsink meeting a predetermined performance constraint, the method comprising: The step of: “determining an initial thermal performance of the heatsink, the determining of the initial thermal performance of the heatsink comprising performing an initial thermal simulation of a heat source positioned proximate the heatsink base”; “selecting, based on the initial thermal simulation, a first rod that has a lowest value of the thermal evaluation parameter and a second rod that has a highest value of the thermal evaluation parameter”; “generating a first revised heatsink configuration, the generating of the first revised heatsink configuration comprising removing the first rod from the heatsink base and carrying out a first subsequent thermal simulation, such that a first revised thermal performance is determined”; “generating a second revised heatsink configuration, the generating of the second revised heatsink configuration comprising adding a third rod to the heatsink base positioned on the second rod and carrying out a second subsequent thermal simulation, such that a second revised thermal performance is determined”; “generating a third revised heatsink configuration, the generating of the third revised heatsink configuration comprising removing the first rod from the heatsink base, adding the third rod to the heatsink base positioned on the second rod, and carrying out a third subsequent thermal simulation, such that a third revised thermal performance is determined”; “comparing the first revised thermal performance, the second revised thermal performance, and the third revised thermal performance to the initial thermal performance and selecting the heatsink configuration that results in a greatest improvement in thermal performance from the initial thermal performance”, and “repeating the selecting of the first rod and the selecting of the second rod until a final heatsink configuration meeting the predetermined performance constraint is generated” under the broadest reasonable interpretation fall under a mental process. Therefore, the claims are directed to an abstract idea, by use of generic computer components and thus are clearly directed to an abstract idea, as constructed.
Step 2A Prong Two
This judicial exception is not integrated into a practical application because the additional limitation of: “non-transitory computer readable media” storing “one or more processors”, either alone or in combination, all serve to gather and process data and do not add anything more significantly to the judicial exception, but are mere instructions to apply the exception using a generic computer component that are well known, routine, and conventional activities, which can be of any type, including general-purpose computer previously known in the industries. Merely adding a programmable computer to perform generic computer functions does not automatically overcome an eligibility rejection. Alice, 573 U.S. at 223-24. Furthermore, the use of a general-purpose computer to apply an otherwise ineligible algorithm does not qualify as a particular machine. See Ultramerciallnc. v. Hulu, LLC, 772F.3d 709, 716-17 (Fed. Cir. 20l4); In re TLI Commc 'ns LLC v. AV Automotive, LLC, 823 F.3d 607, 613 (Fed. Cir. 2016) (mere recitation of concrete or tangible components is not an inventive concept); Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, 785; the step of: “establishing an initial heatsink configuration having a heatsink base comprising at least one layer formed of a plurality of tessellated rods and setting a thermal evaluation parameter”, under the broadest reasonable interpretation, reasonable fall under data gathering and processing activities that are pre-solution activities that are also well-known, routine and conventional activities; and the step of: “using the elected heatsink configuration in place of the initial heatsink configuration” amount to post-solution activities and are not sufficient to amount to significantly more than the judicial exception (See further MPEP 2106.05(d)(i-iv)-f); thus are not patent eligible under 35 USC 101.
Step 2B
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, as previously discussed above with reference to the integration of abstract idea into a practical application, the additional elements of: “non-transitory computer readable media” storing “one or more processors”, either alone or in combination, all serve to gather and process data and do not add anything more significantly to the judicial exception, but are mere instructions to apply the exception using a generic computer component that are well known, routine, and conventional activities, which can be of any type, including general-purpose computer previously known in the industries. Merely adding a programmable computer to perform generic computer functions does not automatically overcome an eligibility rejection. Alice, 573 U.S. at 223-24. Furthermore, the use of a general-purpose computer to apply an otherwise ineligible algorithm does not qualify as a particular machine. See Ultramerciallnc. v. Hulu, LLC, 772F.3d 709, 716-17 (Fed. Cir. 20l4); In re TLI Commc 'ns LLC v. AV Automotive, LLC, 823 F.3d 607, 613 (Fed. Cir. 2016) (mere recitation of concrete or tangible components is not an inventive concept); Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, 785; the step of: “establishing an initial heatsink configuration having a heatsink base comprising at least one layer formed of a plurality of tessellated rods and setting a thermal evaluation parameter”, under the broadest reasonable interpretation, reasonable fall under data gathering and processing activities that are pre-solution activities that are also well-known, routine and conventional activities; and the step of: “using the elected heatsink configuration in place of the initial heatsink configuration” amount to post-solution activities and are not sufficient to amount to significantly more than the judicial exception (See further MPEP 2106.05(d)(i-iv)-f). Therefore, using computer components amount to no more than mere instructions to perform the abstract, and thus are not sufficient to amount to significantly more than the recited abstract, as constructed.
3.2 Dependent claims 2-11, 14-18 merely include limitations pertaining to: (claim 2 and 14), “wherein the preprocessing step comprises the steps of: “selecting a fourth rod that has a second lowest value of the thermal evaluation parameter and a fifth rod that has a second highest value of the thermal evaluation parameter and repeating the selecting of the first rod and the selecting of the second rod when the first revised thermal performance, the second revised thermal performance, and the third revised thermal performance show no improvement in thermal performance compared to the initial heatsink configuration or the elected heatsink configuration” (mental process). (claims 3 and 15); “wherein the thermal evaluation parameter is a bottle neck heat transfer characteristic value, a shortcut heat transfer characteristic value, a temperature, or a heat flux” (mental process); (claims 4 and 16); “wherein the predetermined performance constraint is a maximum heatsink temperature or a heatsink design volume” (mental process); (claims 5 and 17); “wherein a rod of the first rod, the second rod, and the third rod is a tessellating body having at least four surfaces” (mental process); (claims 6 and 18) “wherein a rod of the first rod, the second rod, and the third rod is a cuboid having six surfaces” (mental process), (claim 7); “wherein at least one surface of the second rod is in contact with another rod in any heatsink configuration” (mental process); (claim 8) “wherein the third rod is added to a surface of the second rod that is not in contact with another rod” (mental process); (claim 9) “wherein the surface the third rod is added to is chosen based on a temperature or a convective heat transfer coefficient” (mental process); (claim 10) “wherein each of the first rod, the second rod, and the third rod is identical physically, thermally, or physically and thermally” (mental process); (claim 11) “wherein the at least one layer of tessellated rods represents an existing heatsink geometry” (mental process), all of which further amount to further data gathering and processing or otherwise mental similar to that already recited by the independent claims and already addressed above and thus are further not patent eligible under 35 USC 101.
3.3 Claims 12, 14-18 are further rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. Claim 12 along with its dependencies provide for a “non-transitory computer readable media storing computer-executable instructions” that, when executed on one or more processors, to generate a heatsink configuration …; then goes on to state the computer-executable instructions comprising which could be interprets as software per se as merely software instructions within the media, as constructed.
Claim Interpretation
4. The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
4.1 The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
4.2 This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “one or more processors configured to…” in claim 13.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
5. 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.
5.1 Claims 1-18 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. Independent claim 1 recites the limitation "selecting the heatsink configuration that results in a greatest …" in lines 30-31. There is insufficient antecedent basis for this limitation in the claim, as there was no heat sink that results in anything previously recited in the claims. It would be better if amended to state “selecting a heatsink configuration that results...”. Further in claim 1 line 33, the claim recites “using the elected heat sink configuration…”, previously a selecting step of heat sink configuration, as the electing step has been amended out of the claim and thus lack antecedent basis for this limitation in the claim. Independent claims 12 and 13 include the same defect as claim 1 along with their respective dependencies. Further clarification is respectfully requested in response to this office action.
Furthermore, claim 2 lines 9-10 and claim 14 lines 7-8 similarly inherit the same defect as claim 1 with reference to “the elected heat sink configuration”. Amendment consistent with the selecting step is required, in response to this office action.
5.2 Claim 12 recite a “non-transitory computer readable media storing computer-executable instructions” that, when executed on one or more processors, to generate a heatsink configuration …; then goes on to state the computer-executable instructions comprising a plurality of method’s steps; it is unclear whether applicant meant to claim a particular method performed by the computer-executable instructions or whether the claimed method’s steps were meant to be referred as merely instructions stored in the media, as the claims seem to indicate that the computer-executable instructions comprising which lead to lack of clarity in the claims. Clarification and/or correction is respectfully requested, in response to this office action.
5.3 Claim limitation “one or more processors configured to...”, in claim 13, invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification lacks sufficient disclosure of the corresponding structure, material, or acts for performing the entire claimed function, as there exist no association between the structure and the function can be found in the specification nor any of the disclosed drawings. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Conclusion
6. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
6.1 Sahu et al. (USPG_PUB No. 2022/0117109) teaches a system and method for generating a heat sink for circuitry, such as a power module, that facilitates removal of heat from the circuitry.
6.2 Shedd et al. (USPG_PUB No. 2017/0105313) teaches a multi-chamber heat sink module to provide fluid cooling of one or more heat providing surfaces.
6.3 Alton et al. (USPG_PUB No. 20140236380) teaches methods and systems for optimizing processing performance in a multi-functional portable computing device ("PCD").
7. Claims 1-18 are rejected and this action is non-final. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDRE PIERRE-LOUIS whose telephone number is (571)272-8636. The examiner can normally be reached M-F 9:00 AM-5:00 PM.
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/ANDRE PIERRE LOUIS/Primary Patent Examiner, Art Unit 2187 January 9, 2026