DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-17) in the reply filed on 11 December, 2025 is acknowledged.
Claims 18-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention (Group II, claims 18-20), there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11 December, 2025.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 15 June, 2023 and 7 May, 2024 are being considered by the examiner.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because:
The abstract recites, “The present disclose relates…” which is an implied phrase.
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Interpretation
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.
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.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are:
“heat generating component” in claim 1, in view of the claim associating the structure of the “die” as the “heat generating component” so as to be sufficiently structurally defined.
“heat generating semiconductor component” in claim 14, in view of the claim associated the structure of the “die” and “semiconductor” with the “heat generating semiconductor component” so as to be sufficiently structurally defined.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends 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 remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Claim Objections
Claim 4 is objected to because of the following informalities:
Claim 4 recites “further comprising a second electrically conductive material layer in disposed on the substrate”, which appears to include a typographical error. It is suggested the claim be amended to - - further comprising a second electrically conductive material layer [[in]] is disposed on the substrate - -
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 2-5 and 12 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 2 recites the limitation "the additional electrically conductive material layer" in lines 3-4. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, it is being construed the limitation is directed to the first additional electrically conductive material layer, in light of the supported subject-matter of the originally-filed specification at figures 5 and 6 and paragraph 35.
Claims 3-5 depend from rejected claim 2, and thereby are further rejected due to dependency and/or the recitation of the same indefinite limitation.
Claim 12 recites the limitation “wherein the TEC cooled heat sink” in line 1. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, it is being construed the limitation is directed to a TEC cooled heat sink.
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.
Claim(s) 1-6 and 11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by EID (US 2021/0193549 A1 – published 24 June, 2021).
As to claim 1, EID discloses a thermoelectric cooling (TEC) embedded electronics system comprising:
a substrate (110/410) having a first surface and a second surface and constructed of a thermally and electrically conductive material (par. 26-27, 33, and 48; figure 1D which shows a multitude of surfaces associated with the substrate, 110; figure 4B which shows a multitude of surfaces associated with the substrate);
a die (140 and/or 162; 442 and/or 443) configured to be supported from the first surface (112/412; figure 1D and 4B) of the substrate and in thermal contact with the substrate (par. 27, 35-37, 46 and 48), the die forming a heat generating component (par. 27, 35-37, 49, and 55);
a TEC material element(161/461; par. 36 and 55) having a first surface and a second surface (figure 1D which shows a multitude of surfaces associated with the TEC material, 161; figure 4B which shows a multitude of surfaces associated with the TEC material, 461) and configured to be positioned at least partially against the second surface of the substrate (see annotated figure 1D and annotated figure 4B); and
a heat pipe (120/420) having a first portion and a second portion, the first portion configured to be in thermal contact with the second surface of the TEC material (figure 1D and 4B; par. 28-32, 34, 36, and 49-53), and the second portion configured to sink heat generated by the die and transmitted through the substrate and the TEC material(figure 1D and 4B; par. 28-32, 34, 36, and 49-53).
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Annotated Figure 1D of EID
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Annotated Figure 4B of EID
As to claim 2, EID discloses further comprising a first additional electrically conductive material layer (444 and/or 445) disposed on the first surface of the substrate (figure 4B) and configured to receive current (par. 45-46); and where the first (see interpretation set forth within the rejection under 35 U.S.C. 112(b)) additional electrically conductive material layer is sandwiched between the die and the first surface of the substrate (figure 4B).
As to claim 3, EID discloses an electrically conductive via in electrical contact with the first additional electrically conductive material layer (par. 45-46) and configured to supply electrical current to the first additional electrically conductive material layer (par. 45-46).
As to claim 4, EID discloses a second electrically conductive material layer in disposed on the substrate and configured to receive the electrical current from the electrically conductive via (463; figure 4B, in view of application of interconnects within par. 45-46).
As to claim 5, EID discloses wherein the first and second electrically conductive material layers are disposed on opposing sides of the substrate (figure 4B).
As to claim 6, EID discloses wherein the second surface of the substrate forms an opening (figure 1D, wherein the second surface forms an opening to which the TEC material, 116, is positioned within).
As to claim 11, EID discloses comprising a TEC cooled heat sink (150/450) component configured to be in thermal contact with the second portion of the heat pipe (par. 30 and 49).
Claim(s) 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by EID (US 2021/0193549 A1 – published 24 June, 2021), in view of KIM (US 9,228,763 B2 – published 5 January, 2016).
As to claim 7, EID discloses wherein the TEC material element comprises a TEC material (par. 36, in view of known construction of a thermoelectric cooler), and is disposed in thermal contact with the second surface of the substrate (figure 1D).
"To serve as an anticipation when the reference is silent about the asserted inherent characteristic, such gap in the reference may be filled with recourse to extrinsic evidence. Such evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill." Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749-50 (Fed. Cir. 1991). See MPEP § 2131.01 – III. Specifically, EID discloses the use of a TEC material, which necessarily includes a N-type TEC material so as to perform the operation of a thermoelectric cooler (figures 1- 5B and col. 7, line 64-col. 8, line 20 of KIM). As such, EID includes the TEC material is a N-type TEC material.
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.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over EID (US 2021/0193549 A1 – published 24 June, 2021), in view of MARTIN (US 4,901,324 – published 13 February, 1990).
As to claim 13, EID discloses wherein the die may include active components (par. 37).
However, EID is not explicit in all the types of active components, which include a die, are implemented as.
MARTIN, however, is within the field of endeavor provided a thermoelectric cooling (TEC) embedded electronic system (abstract; col.5, lines 9-11). MARTIN teaches wherein the active component is necessarily a laser diode (22 and 24; col.5, lines 65-68; col. 6, line 66- col. 7, line 2), as a manner of intended employment of the invention for the purpose of maintaining the active element, i.e., a laser diode, within an efficient operating temperature (col. 5, lines 40-41). This is strong evidence that modifying EID as claimed was well within the ordinary capabilities of one skilled in the art and would produce predictable results to one skilled in the art, (i.e., maintaining the active element, i.e., a laser diode, within an efficient operating temperature (col. 5, lines 40-41)). Accordingly, it would have been obvious to one having ordinary skill in the art at the time the invention was effectively filed, to modify EID by MARTIN such that the die is necessarily a laser diode, since all claimed elements were known in the art, and one having ordinary skill in the art could have modified the prior art as claimed by known methods with no changes in their respective functions and the combination would have yielded the predictable result of ensuring the active element remains within the efficient operating temperature(col. 5, lines 40-41).
Furthermore, in view of the combination, the system necessarily would be a TEC stacked diode laser assembly by implementation of the die as the laser diode, in view of the stacked nature of the system set forth within claim 1.
Allowable Subject Matter
Claims 14-17 are allowable.
Claims 8-10, 12 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
As to claim 8 and claim 14, and the dependents thereof, the prior art fails to reasonably disclose, teach, and/or otherwise suggest “wherein the TEC material element forms a continuous loop of N-type TEC material lining the opening of the substrate” (claim 8) or “an N-type TEC material element forming a continuous loop disposed within the opening of the thermally conductive substrate” (claim 14). At best, EID provides the inclusion of the TEC device which is known to include an N-type TEC material(in view of the disclosure of KIM to the ordinary skill of the art). However, the structure known in the art does not provide a “continuous loop of N-type TEC material”. KIM provides a loop of TEC’s provided on the substrate (figure 4B). However, this does not form a “continuous loop of N-type TEC material”, due to the intermediate P-type TEC material elements disposed between the N-type TEC material elements to form the thermoelectric cooler that is configured to operate based on the Peltier effect. Absent some teaching, motivation, and/or suggestion to modify the prior art, prima facie obviousness cannot be established.
As to claim 12, the prior art fails to reasonably disclose, teach, and/or otherwise suggest, “wherein the TEC cooled heat sink comprises a monolithic block of thermally conductive material having a channel formed therein, and wherein the channel is configured to receive the second portion of the heat pipe”. EID discloses including the TEC cooled heat sink (140 and/or 450) and a heat pipe (120 and/or 420). However, EID fails to disclose the TEC cooled heat sink including a channel to which the second portion of the heat pipe is to be positioned, as required by the claim. REFAI-AHMED (US 11, 373,929 B1 – published 28 June, 2022) teaches positioning a heat pipe (186) within a channel (188) of a heat sink (182), as stated in column 7, lines 16-31. However, it is unclear the motivation to rearrange EID to provide the heat pipe within a channel, such as taught by REFAI-AHMED. More so, EID necessarily establishes the intent of including the heat pipe to wrap around the substrate for the purpose of improving the thermal control of the system (par. 1, 22, 29, and 47), such that it is not clear EID would seek a solution that includes positioning the end (such as 121/421) within the heat sink (150/450), as it would prevent the wrapping around of the substrate. Absent some teaching, motivation, and/or suggestion to modify the prior art, prima facie obviousness cannot be established.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNA M MARONEY whose telephone number is (571)272-8588. The examiner can normally be reached Monday - Friday 7AM to 4PM, EST.
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/JENNA M MARONEY/Primary Examiner, Art Unit 3763 1/23/2026
JENNA M. MARONEY
Primary Examiner
Art Unit 3763