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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on November 25, 2025 has been entered.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “printed circuit board” from claim 1 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 1 is objected to because of the following informalities:
In claim 1, line 5, “include at least one opening defined” should either read --include at least one opening define --.
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 1-17 and 19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 claims, “contact is established between the body and the heat dissipation element such that an electromagnetic compatibility (EMC) type enclosure enclosing the printed circuit board is formed.” A printed circuit board is not explicitly shown in the Drawings. However, the board/base substrate upon which components 101 are located is being interpreted as the printed circuit board for the purposes of examination. Figure 1d of the instant application shows where the printed circuit board is completely exposed along the bottom and edge surfaces and partially exposed along the top surface. While heat sink 104 might completely cover the printed circuit board from a top view, body 102 and heat sink 104 do not enclose the printed circuit board. For these reasons, Examiner submits the claimed subject matter is new matter not present within the originally filed disclosure. For the purposes of examination, Examiner will interpret the limitation as “partially enclosing a portion of the printed circuit board.”
Claims 2-17 and 19 are also rejected due to their dependency.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 16 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 16 claims, “wherein, when mated, contact being established such that the opening is at least one of: surrounded, and completely surrounded.” However, it is unclear what structure of the apparatus is being claimed as surrounding the opening. For the purposes of examination, “a plurality of contacts” will be interpreted as surrounding and/or completely surrounding the opening, as evidenced by Paragraphs [0034] and [0058] of the instant application.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-9, 16-17, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hunt (US Publication No. 2017/0181266).
Regarding claim 1, Hunt discloses an apparatus comprising: a heat dissipation element (Figures 4-7, heat sink 110) including at least one protrusion (bottom of depression 111), a body (shield 106) shaped and dimensioned in a manner so as to act as a housing (see Figures 4-7) and cover a printed circuit board (PCB 102; where 106 covers a portion of 102 to the same degree as the instant application) that includes at least one component (component 104), include at least one opening (heat transfer window 108) defined, and mate with the heat dissipation element (110) in a manner such that the at least one protrusion (111) is positionally aligned with the at least one opening (108) so as to be capable of being thermally coupled to the at least one component (104) to facilitate heat dissipation of heat generated by the at least one component (104), wherein, when mated, contact is established between the body (106) and the heat dissipation element (110) such that an electromagnetic compatibility (EMC) type enclosure enclosing the printed circuit board (102) is formed (see Paragraphs [0006], [0020], [0025]-[0026]), wherein the at least one protrusion (111) of the heat dissipation element (110) is integrally formed with the heat dissipation element (110) and shaped, dimensioned, and positioned such that it extends through the at least one opening (108) and is at least positionally adjacent to the component (104) thereby causing thermal coupling between the at least one protrusion (111) and the at least one component (104; see Paragraph [0031]).
Regarding claim 2, Hunt discloses the apparatus according to claim 1, and further discloses wherein contact established between the body (106) and the heat dissipation element (110) is based on at least one of direct contact and indirect contact (see Figures 4-7), and wherein the heat dissipation element (110) has been grounded (see Paragraphs [0022]-[0027]).
Regarding claim 3, Hunt discloses the apparatus according to claim 1, and further discloses wherein contact between the body (106) and the heat dissipation element (110) is based on direct contact such that at least one portion of the body (grounding fingers 120 of 106) directly contacts the heat dissipation element (110) which has been grounded (see Figure 7A-7B and Paragraphs [0022]-[0027]).
Regarding claim 4, Hunt discloses the apparatus according to claim 3, and further discloses wherein the body (106) is further shaped and dimensioned so as to define at least one contact point (120; see Figure 7A-7B) capable of establishing contact between the body (106) and the heat dissipation element (110).
Regarding claim 5, Hunt discloses the apparatus according to claim 4, and further discloses wherein the body (106) is further shaped and dimensioned so as to define a plurality of contact points (120; see Figure 7A-7B) capable of establishing contact between the body (106) and the heat dissipation element (110).
Regarding claim 6, Hunt discloses the apparatus according to claim 5, and further discloses wherein the body (106) is further shaped and dimensioned in a manner such that a face (top face of 106) is defined, and wherein, when mated, the face (top face of 106) faces the heat dissipation element (110; see Figures 7A-7B), and wherein the plurality of contact points (120) are defined on the face (top face of 106).
Regarding claim 7, Hunt discloses the apparatus according to claim 6, and further discloses wherein the plurality of contact points (120) correspond to a plurality of spring contacts (see Paragraph [0024] and Figure 6) comprising at least a first spring contact (first 120) and a second spring contact (second 120), wherein the first spring contact (first 120) and second spring contact (second 120) are discrete contact points to the heat dissipation element (110).
Regarding claim 8, Hunt discloses the apparatus according to claim 7, and further discloses wherein the spring contacts (120) are at least one of: defined along the periphery of the face (top face of 106), and defined in a manner so as to surround the opening (108; see Figure 4).
Regarding claim 9, Hunt discloses the apparatus according to claim 3, and further discloses wherein the body (106) is further shaped and dimensioned so as to define a contact point (120) capable of establishing contact between the body (106) and the heat dissipation element (110).
Regarding claim 16 (as best understood), Hunt discloses the apparatus according to claim 1, and further discloses wherein, when mated, contact being established such that the opening (108) is at least one of: surrounded, and completely surrounded (see Figures 4-7).
Regarding claim 17, Hunt discloses the apparatus according to claim 1, and further discloses wherein the apparatus corresponds to an Electromagnetic Compatibility (EMC) protected shield covering (see Paragraphs [0022]-[0027]).
Regarding claim 19, Hunt discloses the apparatus according to claim 1, and further discloses wherein the protrusion (111) is positionally aligned with the opening (108) so as to be positionally aligned with the component (104) such that thermal coupling between the protrusion (111) and the component (104) is capable of being facilitated (see Figures 7A-7B).
Alternatively, claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Daughtry (US Publication No. 2016/0165764).
Regarding claim 1, Daughtry discloses an apparatus comprising: a heat dissipation element (heat sink 150) including at least one protrusion (shoe 156), a body (shield cap 130) shaped and dimensioned in a manner so as to act as a housing (see Figures 1-4) and cover a printed circuit board (PCB 200; where 130 covers a portion of 200 to the same degree as the instant application) that includes at least one component (heat generating component 210), include at least one opening (defined by collar 136) defined, and mate with the heat dissipation element (150) in a manner such that at least one protrusion (156) is positionally aligned with the at least one opening (defined by 136) so as to be capable of being thermally coupled to the at least one component (210; see Paragraph [0025]) to facilitate heat dissipation of heat generated by the component (210), wherein, when mated, contact is established between the body (130) and the heat dissipation element (150) such that an electromagnetic compatibility (EMC) type enclosure enclosing the printed circuit board (200) is formed (see Paragraphs [0011], [0020]), wherein the at least one protrusion (156) of the heat dissipation element (150) is integrally formed with the heat dissipation element (150) and shaped, dimensioned, and positioned such that it extends through the at least one opening (defined by 136) and is at least positionally adjacent to the component (210) thereby causing thermal coupling between the at least one protrusion (156) and the at least one component (210).
Alternatively, claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen (US Publication No. 2022/0053664).
Regarding claim 1, Chen discloses an apparatus (heat dissipating electromagnetic shielding structure 200) comprising: a heat dissipation element (heat sink 220) including at least one protrusion (connecting structure 222), a body (shielding frame 210) shaped and dimensioned in a manner so as to act as a housing (see Figures 1-2) and cover a printed circuit board (substrate 110; where 210 covers a portion of 110 to the same degree as the instant application) that includes at least one component (electronic element 120), include at least one opening (second opening 212) defined, and mate with the heat dissipation element (220) in a manner such that the at least one protrusion (222) is positionally aligned with the at least one opening (212) so as to be capable of being thermally coupled to the at least one component (120) to facilitate heat dissipation of heat generated by the at least one component (120), wherein, when mated, contact is established between the body (210) and the heat dissipation element (220) such that an electromagnetic compatibility (EMC) type enclosure enclosing the printed circuit board (110) is formed (see Paragraph [0031]), wherein the at least one protrusion (222) of the heat dissipation element (220) is integrally formed with the heat dissipation element (220) and shaped, dimensioned, and positioned such that it extends through the at least one opening (120) and is at least positionally adjacent to the component (120) thereby causing thermal coupling between the at least one protrusion and the at least one component (120; see Paragraph [0031]).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Hunt (US Publication No. 20170181266) in view of Pirillis (US Publication No. 2007/0183128).
Regarding claim 10, Hunt discloses the apparatus according to claim 9, but does not disclose wherein the contact point corresponds to a continuous perimeter contacting the heat dissipation element when the body and the heat dissipation element are mated.
However, Pirillis teaches an apparatus comprising: a heat dissipation element (heat sink 10) and a body (comprised of gasket 20 and receptacle 30), wherein the body (20, 30) is shaped and dimensioned so as to define a contact point (contact between 10 and 20) capable of establishing contact between the body (20, 30) and the heat dissipation element (10), wherein the contact point (contact between 10 and 20) corresponds to a continuous perimeter (see Paragraph [0016]) contacting the heat dissipation element (10) when the body (20, 30) and the heat dissipation element (10) are mated.
Because Hunt and Pirillis both disclose covers including protruding, grounding contact points (see Figures 1-2 in Pirillis; see Figure 4 in Hunt), it would have been prima facie obvious to one of ordinary skill in the art before the effective file date of the claimed invention to have substituted the contact points of Hunt for the contact points of Pirillis according to known methods to yield the predictable results of providing an EMI shielding gasket between an EMI shield and a heat sink. Doing so would have also further protected the electronic components by providing a seal between the heat sink and cover body (see Paragraphs [0016], [0021]-[0022] in Pirillis).
Regarding claim 11, Hunt in view of Pirillis teaches the apparatus according to claim 10, and further teaches (in Pirillis) wherein the contact point (20) corresponds to a continuous perimeter (see Figure 2) which is defined at least one of: along the periphery of a face (top wall 31), and around the opening (opening 38).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Hunt (US Publication No. 2017/0181266), Pirillis (US Publication No. 2007/0183128), and in further view of Lin (US Publication No. 2024/0114670).
Regarding claim 12, Hunt in view of Pirillis teaches the apparatus according to claim 11, and further suggests (in Pirillis) wherein the contact point (20) corresponds to an Electromagnetic Compatibility (EMC) Radio Frequency (RF) dispensed compound (see Paragraph [0016] in Pirillis).
However, Lin explicitly teaches wherein a contact point (see Paragraph [0017] and Figures 1-4) corresponds to an Electromagnetic Compatibility (EMC) Radio Frequency (RF) dispensed compound (see Paragraph [0017], [0025]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective file date of the claimed invention to have made the selection of a known grounding material, such as EMI/RF shielding compound, based on its suitability for its intended use, here being a resilient material used to provide EMI/RF shielding (see Paragraphs [0017], [0025] in Lin). MPEP § 2144.07 and Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious).
Claims 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Hunt (US Publication No. 2017/0181266) in view of Li (US Publication No. 2017/0238410).
Regarding claim 13, Hunt discloses the apparatus according to claim 1, but does not disclose wherein indirect contact is established between the body and the heat dissipation element by manner of a contact layer disposed between the body and the heat dissipation element.
However, Li teaches an apparatus comprising a body (cover 33) and a heat dissipation element (heat sink 50), wherein indirect contact (through conductive foam 70) is established between the body (33) and the heat dissipation element (50) by manner of a contact layer (conductive foam 70) disposed between the body (33) and the heat dissipation element (50).
It would have been prima facie obvious to one of ordinary skill in the art before the effective file date of the claimed invention to have combined the contact layer of Li between the body and heat dissipation element of Hunt. Doing so would have provided an additional layer of shielding material, further protecting the electronic component from EMI (see Paragraph [0026] in Li). Doing so would have also ensured the heat dissipation element remained secured to the cover body (see Paragraph [0026] in Li).
Regarding claim 14, Hunt in view of Li teaches the apparatus according to claim 13, and further teaches (in Li) wherein the body (33) is further shaped and dimensioned so as to define at least one contact point (convex lug 64 of 60, corresponding to fingers 20 in Hunt) capable of establishing contact between the body (33) and the heat dissipation element (50).
Regarding claim 15, Hunt in view of Li teaches the apparatus according to claim 14, and further teaches (in Li) wherein the contact layer (70) corresponds to an Electromagnetic Compatibility (EMC) pad (see Paragraphs [0023]-[0028]).
Response to Arguments
Applicant’s arguments with respect to claims 1-17 and 19 have been considered but are not persuasive. Applicant argues Hunt does not teach wherein shield 106 and heatsink 110 does not cover the entirety of PCB 102 (Arguments, pages 6-7). However, the claims do not require the shield and heat sink to cover the entirety of the PCB -- the claims simply require (1) the body to act as a housing and cover the PCB, and (2) the body and heat sink to enclose the printed circuit board. However, the instant application does not disclose or show where the body and heat sink enclose the printed circuit board. (NOTE: A printed circuit board is not explicitly shown in the Drawings. However, the board/substrate upon which components 101 are located is being interpreted as the printed circuit board.) Figure 1d shows where the printed circuit board is completely exposed along the bottom and edge surfaces and partially exposed along the top surface. While heat sink 104 might completely cover the printed circuit board from a top view, body 102 and heat sink 104 do not completely enclose the top surface of the printed circuit board, let alone the printed circuit board itself. Because Hunt covers/acts as a housing for the printed circuit board to the same degree as the instant application, Examiner maintains Hunt teaches the claimed device. Examiner submits Daughtry (US Publication No. 2016/0165764) and Chen (US Publication No. 2022/0053664) also anticipate the claimed device, where Daughtry and Chen disclose housing/enclosing a PCB to the same degree as the instant application.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Lin (US Publication No. 2009/0091888) also teaches an assembly similar to the claimed assembly.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GAGE STEPHEN CRUM whose telephone number is (571)272-3373. The examiner can normally be reached Monday - Friday 8:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Allen Parker can be reached at (303)297-4722. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GAGE CRUM/Examiner, Art Unit 2841
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