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
Applicant’s amendment filed 09/11/25 (hereinafter Response) including claim amendments have been entered. Examiner notes that claims 1, 3 and 14-16 have been amended and claims 2 has been cancelled. Applicant’s amendment necessitated a new ground(s) of rejections under (35 USC § 103 (details below)) are made and claims 1-16 remain pending in the application.
Response to Arguments
Applicant's arguments filed 09/11/2025 (‘Remark’, page 8-12), regarding all claim rejections under 35 USC § 103 have been fully considered but are moot because a new ground of rejection (under 35 USC § 103 over Matsuo in view of Tagaya Kensuke and further in view of Heinz, details below) does not rely on the references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
Claims 1-10 and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Matsuo Akira (JP 2007176354; hereinafter “Matsuo”) in view of Tagaya Kensuke (JP2020179813 A; hereinafter, “Kensuke”) and further in view of Heinz et al. (US Pat. 6190941 B1; hereinafter “Heinz”). (Note that – for Applicant’s convenience – underlined text below corresponds to recently amended claim limitations.)
Regarding claim 1, Matsuo discloses: a motor unit (drive unit 206, fig 1-4 and Description) for use in an electric bicycle (200, [0026])), the motor unit comprising:
a motor (214) having a stator (78; see fig. 8 where a core with windings is shown which is considered to be a motor- stator components accompanied by torque sensor 219 [0028]);
a switching element (222, [0033 discloses that the power elements 222a, 222b, and 222c, which constitute 222, turn on and off the upper arms of the U phase]) configured to have the motor driven [0033, line 286];
a board (circuit board 216, [0028]) having:
a principal surface (one surface 230, [0031]) including a mounting surface to mount the switching element (222) thereon [ para. 0031 teaches: “plurality of power elements 222 are mounted on one surface 230 of the circuit board 216”]; and
a reverse surface (opposite face of 230) facing opposite from the principal surface (230);
solder (231, [0031]) to fix the switching element (222) onto the mounting surface [para. 0031 teaches: “as shown in figs. 3B and 3C, a plurality of power elements 222 (switching element) are mounted on one surface 230 of the circuit board 216 with solder 231]; and
a case housing (215) the board (216) therein [0043, fig. 3 and 4] and including a first divided part (fig. 3) and a second divided part (fig. 4) for housing the motor (214; fig. 2), through which an input shaft (drive shaft 218) passes to be rotatable around an axis (axis of 218, fig. 2) thereof,
wherein the board (216) further has:
Matsuo teaches the motor, switching element and its thermal connection, but fails to explicitly teach a motor having a stator wherein the first divided part includes a first heat-dissipating portion protruding toward the sheet of metal foil and a second heat dissipation portion wherein the second divided part includes a second heat-dissipating portion protruding toward the switching element and the remaining limitations; however,
Kensuke in another drive unit for man powered vehicle similar to Matsuo teaches a motor (14) having a stator (14B) [para. 0009 teaches that a motor includes a rotor and a stator] wherein the first divided part (“a first housing 32”; fig. 1) includes (fig. 1) a first heat-dissipating portion (“a first heat conductive portion” 28), [0024]) protruding toward the sheet of metal foil (first substrate surface 22),wherein the second divided part (“ a second housing 34”) includes a second heat-dissipating portion (“a second heat conductive portion” 30, [0024]) protruding toward the switching element (“switching elements” [0035]),wherein the first heat-dissipating portion (28) is thermally connected to the sheet of metal foil (22),wherein the second heat-dissipating portion (30) is thermally connected (via electronic element 72 which constitute switching element; [para. 0037 teaches that the electronic element 72 having the largest heat generation amount on the second substrate surface 24]) to the switching element (“switching elements”), and wherein the second heat-dissipating portion (30) is positioned outside the stator (14B) [see fig. 1 where 30 is positioned outside the stator 14B] and between the input shaft (50, fig. 1; [0032]) and the stator in a direction perpendicular to the axis (C1; fig. 1) [see fig. 1-2 where second heat-dissipating portion (30) is positioned outside the stator and between the input shaft in a direction perpendicular to the axis].
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Matsuo to incorporate the teaching of Kensuke and provide a motor having a stator wherein the first divided part includes a first heat-dissipating portion protruding toward the sheet of first substrate and a second heat dissipation portion wherein the second divided part includes a second heat-dissipating portion protruding toward the switching element with a reasonable expectation of success in order to advantageously replace an ordinary electric motor with a motor having a stator, splitting heat dissipation in two divided zones that allows heat to be removed more evenly; prevents hotspots by distributing thermal load across multiple surfaces, thus enhancing motor to deliver higher power density and efficiency, which translate into longer battery life, extending riding range, and thereby configure to apply propulsion power to the man powered vehicle [ ‘Abstract’ of Kensuke].
Matsuo as modified above teaches the use of solder and conductive layers of substrate, board (216) and through hole (hole at 238, fig. 3) through the board 216 of Matsuo, but fails to explicitly teach that the board further has a through hole provided to penetrate through the board from the mounting surface through the reverse surface; and a sheet of metal foil covering an inner periphery surface of the through hole at least partially wherein the switching element is thermally connected to the sheet of metal foil and the substrate of the modified Matsuo in view of Kensuke is the sheet of metal foil; however,
Heinz in another circuit arrangement similar to Matsuo teaches that the board (5) further has a through hole (open hole 15 [size 0.4mm to 1 mm, claim 19]) provided to penetrate through the board (circuit board 5) from the mounting surface (surface of 236, [0036]) through the reverse surface (thermal via 7, [col. 4, line 36-40]); and a sheet of metal foil (metallization layers 6, [col. 4, line 25-28]) covering an inner periphery surface of the through hole (inner wall of the through hole, [col. 4, line 24-25] at least partially [col. 4, line 35-40 teaches that the open hole 15 via thermal 7 at top surface 12; thus, metal foil covering an inner peripheral surface of the through hole at least partially], wherein a switching element (power electronic component 1 which dissipates power in the form of heat [col 4, line 15-20]) is thermally connected to the sheet of metal foil (metallization layer 6, [col 4, line 40-45]) via the solder (“molten solder”; ‘Abstract’).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to integrate the teaching of Heinz and provide the sheet of metal foil where a switching element is thermally connected to a circuit board and a circuit board containing a through hole that penetrates through the board, provided with the first divided part of the modified Matsuo in view of Kensuke which includes a first heat-dissipating portion protruding towards the first substrate, such as “sheet of metal foil” as taught by Heinz with a reasonable expectation of success in order to advantageously incorporate the improved thermal management that can improve conductivity and remove dissipated heat to prevent damage and improper operation thereof [ col. 4, line 18-25 of Heinz].
The motivation to combine the teaching of Kensuke and Heinz into the invention of Matsuo arises from the shared objective of enabling efficient heat dissipation across the surfaces of the motor housing by variable electronic architecture and secure attachment in dynamic driving environments. The inclusion of a known technique (using metal foil for heat dissipation) to improve a similar device in a predictable way renders the combination unpatentable unless there were unexpected results, or the art taught away from the combination.
Regarding claim 3, Matsuo as modified above doesn’t teach that an insulating member provided on the reverse surface to cover the through hole at least partially; however,
Heinz teaches that an insulating member (film 9) provided on the reverse surface to cover the through hole (open hole 15) at least partially [col 4, line 50-55 teaches: “an electrically insulating and thermally conducting foil or film 9 is arranged between the bottom surface 13 of the circuit board 5 and the cooling body 10 to ensure electrical insulation of the circuit board from the cooling body”; note that hole is the through hole that touches reverse surface to cover the through hole at least partially.]
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Matsuo to incorporate the teaching of Heinz and provide an insulating member along the reverse surface to partially cover the through hole in order to advantageously improve the thermal management that can prevent circuit board from moisture, ensuring proper insulation of the circuit board from the cooling body and thereby improving performance [ col. 4, line 53-55 of Heinz].
Regarding claim 4, Matsuo as modified above further teaches that the through hole (15) has a diameter falling within a range from 0.2 mm to 0.4 mm [ col. 6, claim 19 teaches that the through-hole has a diameter in a range from 0.4 mm to 1 mm].
Finally, it is noted that Applicant does not positively recite any criticality to the claimed mathematical value, therefore such optimization thereof would be obvious to the skilled artisan.
Regarding the hole diameter falling specially withing a range from 0.2 mm and 0.4mm, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to the hole size withing the range from 0.2 mm and 0.4 mm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 5, Matsuo as modified above further teaches that the motor (214, fig. 2b) is located on the same side as the switching element (222, fig. 2a) with respect to the board (216) [See figures 2a, 2b and 3 of Matsuo where motor 214 is located on the same side as the switching element 222.; also see para. 0030].
Regarding claim 6, Matsuo as modified above teaches the sheet of metal foil (235) but fails to teach that the sheet of metal foil has a thickness falling within a range from 10 µm to 30 µm.
Heinz teaches that the screen printing material 8 onto the sheet of metal foil 6 surrounding the open hole 14 of the thermal via 7, and the thickness of such an overlapping layer of the screen printing material surrounding the area of the open hole and protruding from the bottom surface of the circuit board is as small as possible, for example having a layer height or thickness of less than 60μm [ see col. 5, line 20-25].
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Matsuo to incorporate the teaching of Heinz and provide an the sheet of metal foil that has the thickness less than 60μm. in order to advantageously improve the sealing of the thermal without significantly diminishing the heat transfer path from the top surface to the bottom surface of the circuit board [ col. 5, line 30-35 of Heinz].
Finally, it is noted that Applicant does not positively recite any criticality to the claimed mathematical value, therefore such an optimization thereof would be obvious to the skilled artisan.
Regarding the sheet thickness value falling within a range from 10 µm to 30 µm, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to the sheet thickness value within a range from 10 µm to 30 µm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 7, the modified Matsuo further teaches that the board includes a base member (heat dissipation sheet 235, [0038]) made of a thermally conductive material [para. 0038].
Regarding claim 8, Matsuo as modified above further teaches that a part (rectangular - parallelepipeds shape, [Abstract]), located on the same side as the switching element (222) with respect to the board (216), of the case is thermally connected to the switching element (222). See Abstract of Matsuo.
Regarding claim 9, Matsuo as modified above further teaches that a metal layer (10, col 4, line 45-50]) and a resist layer (film 9, [col 4, line 50-55]) covering the metal layer (10, fig 1-2), the metal layer (10) is thermally connected to the sheet of metal foil (layer 6), the resist layer (9) is arranged to expose a part of the metal layer (10), and a heat-dissipating solder (mounting solder 4) portion is fixed to the part of the metal layer (10).
Regarding claim 10, Matsuo as modified above further teaches that the through hole (open hole 15 of Heinz) has an opening [ looking at the fig. 2 of Matsuo, the region where the switching element 222 is located features an opening] and the switching element (222 of Matsuo) faces the opening [see fig. 2 where 222 faces the opening.]
Regarding claim 13, Matsuo as modified above further teaches a microcontroller (224) mounted on the board (216), wherein the microcontroller is arranged not to overlap with the motor (214) when viewed along a center axis of rotation of the motor [ see fig. 3 of Matsuo where micro controller 224 is arranged not to overlap along a center axis of rotation of the motor].
Regarding claim 14, Matsuo as modified above further teaches:
the input shaft (207 of Matsuo), to which crank arms (arm connecting crank shaft 207 and pedal 208) are coupled and which is rotatable (fig. 1, [0028]);
wherein the first output body (pedal 208), to which a first sprocket (209) is coupled, and which is rotatable (fig. 1 and 2); and
a second output body (output shaft 223), to which a second sprocket (drive sprocket 210) is coupled and which is rotatable (fig1 and 2),
wherein the first output body is configured to receive rotational power transmitted from the input shaft (207), and
wherein the second output body (223) is configured to receive rotational power transmitted from the motor (214) [ see para.0028 of Matsuo].
Regarding claim 15, Matsuo as modified above further teaches that
the input shaft (207), to which crank arms (arm connecting crank shaft 207 and pedal 208) are coupled and which is rotatable (fig. 1); and
an output body (second output body 223), to which a sprocket (210) is coupled and which is rotatable (fig. 1 and 2),
wherein the output body is configured to receive rotational power transmitted from the input shaft (207) and rotational power transmitted from the motor (214). See para. 0028 of Matsuo.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Matsuo in view of Kensuke, in view of Heinz and further in view of Watanabe et al. (US 20130058044 A1; hereinafter, “Watanabe”).
Regarding claim 11, Matsuo as modified above doesn’t appear to disclose that two or more electric field capacitors mounted on the board; however,
Watanabe, in another control device, similar to Matsuo and Heinz teaches the two or more electric field capacitors (25 and 26, fig. 7 and [0082]) mounted on the board (plate-shaped base 18).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Matsuo to incorporate the teaching of Watanabe and provide two or more electric field capacitors in order to advantageously improve the voltage regulation thereby preventing a reduction of battery life and constituting a noise filtering circuit
[ para. 0083 of Watanabe].
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Matsuo in view of Kensuke, in view of Heinz and further in view of Reimer et al. (US 20210197689 A1; hereinafter “Reimer”).
Regarding claim 12, Matsuo as modified above further teaches a microcontroller (224, [0030]) which is mounted on a first half of the board (216) [ shown in fig. 3, 224 is positioned on the first half of the board], wherein the mounting surface is located in a second half of the board [ see fig. 3 and para. 0030 where mounting surface is located in a second half of the board]. The modified Matsuo does not appear to explicitly teach that an inertial sensor which is mounted on the first half of the board; however.
Reimer, in another system for the bicycle, similar to Matsuo, Kensuke and Heinz teaches an inertial sensor (gyroscope/accelerometer sensor 116, [0034]) is mounted on a first half of the board [shown in fig. 4B, acceleration limit of the accelerometer is located on the first half of the circuit board].
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Matsuo to incorporate the teaching of Reimer and provide an inertial sensor which can be mounted on the first half of the circuit board in order to advantageously enhance stability and control, ensuring angular linear acceleration, such as direction and magnitude can be measurable and such a data may be communicated to the other devices of the user interface [ Para. 0034 of Reimer].
Claims 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Matsuo in view of Kensuke, in view of Heinz and further in view of Ishikawa Noriyasu (WO2014097985 A1; hereinafter “Ishikawa”).
Regarding claim 16, Matsuo discloses: a motor unit (drive unit 206, fig 1-4 and Description) for use in an electric bicycle (200, [0026])), the motor unit comprising:
a motor (214);
a switching element (222, [0028]) configured to have the motor driven [0033, line 286];
a board (circuit board 216, [0028]) having: a principal surface (one surface 230, [0031]) including a mounting surface to mount the switching element (222) thereon [ para. 0031 teaches: “plurality of power elements 222 are mounted on one surface 230 of the circuit board 216”]; and a reverse surface (opposite face of 230) facing opposite from the principal surface (230);
a case housing (215) the board (216) therein [0043, fig. 3 and 4]
Wherein the case includes a heat-dissipating portion (231) to transfer heat generated by the switching element to an outer surface of the case (215, [0042]),
Wherein the board (216) includes, but fails to teach that an insulating layer is arranged to expose a part of the metal layer, wherein the part of the metal layer is provided with a metallic projection protruding away from the board, and wherein the metallic projection includes a solder, and is thermally connected to the heat-dissipating portion
Heinz in another process for fabricating a circuit arrangement similar to Matsuo teaches: an insulating layer is arranged to expose a part of the metal layer [fig. 1 shows 8 has covered at top surface to expose the part of layer 10], wherein the part of the metal layer (10) is provided with a metallic projection (fin 110 protruding away from the board [see fig. 1 where fins are protruding away from the board], and wherein the metallic projection (110) includes a solder, and is thermally connected to the heat-dissipating portion [col. 2, line 65-70 teaches that the printed closure or sealing of the via holes prevents the molten solder material from permeating through the via holes from the top surface to the bottom surface of the substrate, and thereby protects the bottom surface of the substrate; thus, the metallic projection includes a solder, and is thermally connected to the heat-dissipating portion.]
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Matsuo to incorporate the teaching of Heinz and integrate a metal layer, provided with a metallic projections, such as fins where fins are protruding away from the board that includes solder, and is thermally connected to the heat-dissipating portion as described in the teaching of Heinz above in order to advantageously incorporate the improved thermal management that can improve conductivity and remove the dissipated heat from the circuit management to prevent damage and improper operation thereof [ col. 4, line 18-25 of Heinz].
Regarding claim 17, Matsuo as modified above discloses the motor unit and the heat dissipating portion, but fails to teach that the heat-dissipating portion includes a first heat-dissipating portion thermally connected to the metallic projection via a thermally conductive member; however,
Ishikawa, in another drive unit for power-assisted bicycle, similar to Matsuo, Kensuke and Heinz teaches the heat-dissipating portion includes a first heat-dissipating portion (first region 157, [0117]) thermally connected to the metallic projection (radiator fins) via a thermally conductive member (via electric component 156).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Matsuo to incorporate the teaching of Ishikawa and provide the heat-dissipating portion that includes a first heat-dissipating portion thermally connected to the metallic projection, such as fins via a thermally conductive member in order to advantageously integrate efficient power handling in electronic components while maintaining proper thermal management, facilitating the smooth dissipation of generated heat [para. 0118 of Ishikawa].
Regarding claim 18, Matsuo as modified above doesn’t appear to explicitly teach that the metallic projection is arranged to overlap with the switching element when viewed perpendicularly to the reverse surface.
Ishikawa, in another drive unit for power-assisted bicycle similar to Matsuo, Kensuke and Heinz teaches the second housing portion includes a plurality of radiator fins (metallic projections) in the area that overlaps the heat-transfer sheet 158; note that switching element is positioned on the heat transfer sheet 158, thus metallic projection is arranged to overlap the switching element] when view perpendicularly to the reverse surface as described in fig. 8 of Ishikawa.
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Matsuo to incorporate the teaching of Ishikawa and provide the metallic projection that is arranged to overlap with the switching element when viewed perpendicularly to the reverse surface in order to advantageously maintain proper thermal management that allows heat generated by the electric components to be easily released. [para. 0118 of Ishikawa].
Regarding claim 19, Matsuo as modified above doesn’t appear to explicitly teach that the heat-dissipating portion includes a second heat-dissipating portion thermally connected to the switching element via a thermally conductive member.
Ishikawa teaches that the heat-dissipating portion includes a second heat-dissipating portion (154) thermally connected to the switching element via a thermally conductive member (152, [0115]).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Matsuo to incorporate the teaching of Ishikawa and provide the heat-dissipating portion that includes a second heat-dissipating portion thermally connected to the switching element via a thermally conductive member in order to advantageously maintain proper thermal management that allows heat to be easily released generated by the electric components. [para. 0118 of Ishikawa].
Regarding claim 20, Matsuo as modified above doesn’t appear to explicitly teach that at least part of the heat-dissipating portion is provided separately from the case (52R).
Ishikawa teaches that at least part of the heat-dissipating portion (162, fig. 11) is provided separately (fig. 11) from the case (52R, [0106]).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Matsuo to incorporate the teaching of Ishikawa and provide at least part of the heat-dissipating portion that is provided separately from the case in order to advantageously maintain proper thermal management with adequate heat dissipation that allows heat to be easily released generated by the electric components. [para. 018 of Ishikawa].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20210214043 to Masato teaches “motor unit includes a substrate, a motor, and at least one conductive member. The substrate has a first surface, and a second surface aligned in a thickness direction of the substrate.”
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 extension fee 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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/NABIN KUMAR SHARMA/
Examiner, Art Unit 3611
/VALENTIN NEACSU/ Supervisory Patent Examiner, Art Unit 3611