DETAILED ACTION
This action is responsive to the application filed 1/19/23.
Claims 1-20 are rejected.
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.
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 .
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) 1-4 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by Mills et al. (US 20080188915, “Mills”), or in the alternative, under 35 U.S.C. 103 as obvious over Mills.
Regarding claim 1, Mills teaches a temperature controllable wrap assembly (Abstract, ‘A device configured to treat a human or animal body part or limb by providing a heating and/or cooling effect in addition to a compressive force’) comprising: a wrap portion configured to be worn around a user's body part (Fig. 1, strap 102); a first temperature control module positioned on the wrap portion (Par. 33 and figs. 1-2, thermoelectric module 103), wherein the first temperature control module includes: a housing (Fig, 3 and par. 46, material 207 located around the periphery of Peltier cell 206; par. 46, “The heat dissipation means 200 comprises a casing comprising a plurality of vents or heat transfer fins 203.”); a controllable temperature element (Fig. 2, Peltier cell 206); a spreader member (Fig. 3, conductive piece 209; par. 13, “In order to achieve this, the present invention utilises a thermally conductive material in contact with at least one thermoelectric module. Accordingly, heat generated at a surface of the thermoelectric module is conducted and distributed over the surface area of the conductive material.”); a sensor embedded in the spreader member (Fig. 8 and par. 67, ‘One or a plurality of temperature sensors 801 are positioned at Peltier cell 206 and/or selected regions of the conductive material 209, 305.’); and a first finger spreader (Par. 53 and fig. 3, “The conductive material is divided into two pieces 209, 305 joined together to form a movable joint 301 by suitable pivot means 302”; the examiner maintains that conductive piece 305 can be considered ‘a first finger spreader’ according to the broadest reasonable interpretation (BRI) of the term. For instance, the BRI of the term ‘finger’ encompasses an elongated segment or extension projecting outward from a base member. Therefore, conductive piece 305 which can be considered a ‘finger’ since it is an elongated segment which projects outward from conductive piece 209) pivotably attached to the spreader member (Par. 53, ‘The conductive material is divided into two pieces 209, 305 joined together to form a movable joint 301 by suitable pivot means 302.’), wherein a lower surface of the spreader member is positioned to contact the user's body part (Par. 52, ‘Accordingly, the conductive material may comprise one or a plurality of bent or curved regions 300, 303, 304 configured to match the curvature and contours of the body part.’), wherein the controllable temperature element is configured to transfer thermal energy to an upper surface of the spreader member (Fig. 2 and par. 46, ‘A conductive material 209 is positioned in thermal contact with the active face 211 of the Peltier cell.’), and wherein the spreader member is configured to conduct the thermal energy to the first finger spreader (Par. 13, ‘Accordingly, heat generated at a surface of the thermoelectric module is conducted and distributed over the surface area of the conductive material. Similarly, when the thermoelectric module is operating so as to provide a cooling effect, in which heat is drawn from one face of the thermoelectric module and dissipated via a heat sink at an adjacent face, the resulting cooling effect propagates across the surface area of the conductive material.’); and a main control module in electrical communication with the first temperature control module (Fig. 8 and pars. 63-64, “Control means 703 is positioned remote from the thermoelectric module 103 and/or strap 102. […] Means 702 allow communication between the control means 703 and the various components of the present invention including thermoelectric module 206”), wherein the main control module includes a battery (Fig. 8 and par. 70, “Power source 800 may comprise at least one battery”).
In the alternative, with respect to the ‘spreader’ and ‘first finger spreader’ aspects, fig. 7 of Mills teaches an alternative embodiment comprising a spreader member (Fig. 7, conductive material 700); and a first finger spreader (Fig. 7, plurality of fingers 713). Fig. 7, of Mills, however, fails to teach that fingers 713 are pivotably attached to the spreader member 700.
The examiner maintains, however, that it would have been obvious to a POSITA at the time that the invention was filed to modify fingers 713 by attaching them to spreader 700 through pivotal connections (e.g. 301/302), as already disclosed with respect to fig. 3 and par. 26. For instance, Mills explicitly teaches in par. 62 that the device is configured to allow for joint movement while maintaining contact between the conductive material and the skin. Further paragraphs 26 and 53 of Mills already teach pivotal connections to achieve this goal. Therefore, a POSITA would have found it obvious at the time that the invention was filed to attach fingers 713 to the base conductive material 700 using pivotal connections, in order to achieve Mills stated goal of allowing joint movement while maintaining contact between the conductive material and the skin.
Regarding claim 2, Mills or Mills, as modified, further teaches wherein the lower surface of the spreader member is curved (Par. 52, “Accordingly, the conductive material may comprise one or a plurality of bent or curved regions 300, 303, 304 configured to match the curvature and contours of the body part.”).
Regarding claim 3, Mills or Mills, as modified, further teaches wherein the first finger spreader is pivotable between a first position and a second position (Par. 26, “The conductive material pieces may be pivotally mounted, slidably mounted, detachably mounted, riveted, pinned or hinged together to form a movable joint.”), wherein in the second position a distal end of the first finger spreader is positioned below the lower surface of the spreader member (Fig. 3, showing piece 305 including its distal end below the lower surface of piece 209 implying that the distal end would inherently be below the lower surface of 209 in the second position. Further, par. 56 discloses that the conductive sections are configured to be bendable to curve around the contours of the human body further lowering the distal end of 305 relative to 209. Similar arguments can also be advanced relative to fingers 713 in fig. 7).
Regarding claim 4, Mills or Mills, as modified, further teaches wherein the spreader member includes a knuckle portion, wherein the first finger spreader includes a pin portion that is received in the knuckle portion, and wherein the pin portion is rotatable within the knuckle portion (Fig. 3, showing a pinned joint having a pin portion and a knuckle portion; par. 26, “The conductive material pieces may be pivotally mounted, slidably mounted, detachably mounted, riveted, pinned or hinged together to form a movable joint.”).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as obvious over Mills et al. (US 20080188915, “Mills”).
Regarding claim 5, while Mills or Mills, as modified, fails to explicitly teach a second temperature control module positioned on the wrap portion which comprises the same structural components as those taught with respect to the first temperature control module, it is the examiner’s opinion it would have been obvious to a POSITA to duplicate the first temperature control module so as to provide the wrap with a second temperature control module.
For instance, par. 19 of Mills explicitly states that the device comprises “at least one thermoelectric module.” As such, it would have been obvious to a POSITA at the time that the invention was filed to provide the device with a second thermoelectric module positioned on the wrap and having the same structural components as the first thermoelectric module, since the teaching of “at least one” suggests that the inventor explicitly contemplated the existence of multiple thermoelectric modules. Therefore, a POSITA would have been motivated to duplicate the thermoelectric module to expand the active thermal treatment area across the user’s limb and since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Further, with respect to the extension orientations of the first and second fingers being in ‘generally opposite direction’, it is the examiner’s position that this limitation is also rendered obvious by Mills.
For instance, when positioning multiple temperature control modules on a wrap or garment designed to conform to an anatomical limb (Fig. 1), a POSITA would naturally be led to orient the finger extensions of the respective modules in generally opposite directions to cover different areas of the target area (e.g. opposite side of the limb or join). A POSTIA would be motivated to do so, to maximize thermal coverage of the limb and further since it is a matter of obvious design choice to merely rearrange/reverse the orientations of parts to achieve an intended or desired thermal coverage (In re Kuhle, 526 F.2d 553; In re Gazda, 219 F.2d 449)
Claims 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mills in view of Mandel (US 20130085552).
Regarding claim 6, Mills, as modified, fails to teach a vibration device embedded in the wrap portion.
Mandel teaches an analogous temperature controllable wrap assembly (Abstract, ‘At least one thermoelectric assembly controlled by a microprocessor and disposed on a thermal conduction pad configured to conduct energy to and from the thermoelectric assembly and adjacent the treatment area positioned with removable electronics and a breathable liner. ’), which comprises a vibration device embedded in the wrap portion to facilitate the soothing and loosening of tight muscles during thermal therapy (Fig. 8 and par. 46, ‘ In this example embodiment, a vibrator mechanism 42 is added to the therapy device so as to assist with penetration and the soothing and loosening of tight muscles during the heat cycle.’).
Therefore, in view of Mandel, it would have been obvious to a POSITA at the time that the invention was filed to modify Mills by incorporating a vibration device into the wrap portion, to facilitate the soothing and loosening of tight muscles during thermal therapy, as taught by Mandel.
Regarding claim 7, Mills, as modified, while teaching first and second temperature control modules (see the discussion of claim 5, above), and the integrating of the temperature control modules with vibration devices (See Mandel, fig. 8, vibration assembly 42), fails to teach wherein the wrap portion comprises a center axis that extends between the first and second temperature control modules, wherein the first temperature control module is positioned between the first vibration device and the center axis and the second temperature control module is positioned between the second vibration device and the center axis.
However, while the references do not explicitly show positioning two temperature control modules and two vibration devices symmetrically on opposite sides of a central axis of the wrap, the examiner maintains that it would have been obvious to a POSITA at the time that the invention was filed to duplicate the vibration device and arrange the respective thermal and vibration components on opposite sides of the wrap’s central axis to distribute therapeutic heating/cooling and vibration evenly across opposing anatomical sides of a joint or limb (e.g., medial and lateral sides), to optimize therapeutic coverage and to prevent an uneven distribution of therapy. Such a spatial placement represents a routine rearrangement of parts and obvious matter of design that would yield the predictable result of a desired therapeutic coverage (In re Kuhle, 526 F.2d 553).
Claim(s) 8, 10-15, 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mills, as applied to claims 1-5 above, and further in view of Aguiar et al. (US 20190350752, “Aguiar”).
Regarding claim 10, Mills, as modified, teaches a temperature control module (Par. 33 and figs. 1-2, thermoelectric module 103) comprising: a housing (Fig, 3 and par. 46, material 207 located around the periphery of Peltier cell 206; par. 46, “The heat dissipation means 200 comprises a casing comprising a plurality of vents or heat transfer fins 203.”); a controllable temperature element (Fig. 2, Peltier cell 206; par. 20, “The device further comprises control means configured to control the heating and cooling effect provided by the thermoelectric module”) having a first surface and a second surface (Fig. 2, Peltier cell 206 having an active surface 211 mapped to the ‘second surface’ and an adjacent face 212 mapped to the ‘first surface’), wherein the first surface opposes the second surface (Fig. 2, adjacent face 212 is opposite active surface 211); a heat sink (Fig. 2, heat sink 204) in contact with the first surface of the controllable temperature element (Fig. 2, heat sink 204 is in contact with adjacent face 212); a fan (Fig. 2, fan 200) positioned in the housing (Par. 46, “The heat dissipation means 200 comprises a casing comprising a plurality of vents”) and configured to direct heat away from the heat sink (Par. 47, “The heat transferred to face 212 is absorbed by heat sink 204 and subsequently dissipated by the action of the rotating fan blades 201.”); a spreader member (Fig. 2 and par. 46, ‘A conductive material 209 is positioned in thermal contact with the active face 211 of the Peltier cell.’; alternatively, fig. 7, conductive material 700), wherein the controllable temperature element is configured to transfer thermal energy to an upper surface of the spreader member (Par. 49, “Accordingly, when operating in a heating mode, heat energy is transferred to the conductive material and subsequently the skin of a patient in contact with the material. When operating in a cooling mode, heat energy is drawn from the conductive material by the Peltier cell 206 via active face 211.”); a first finger spreader (Fig. 7, plurality of fingers 713 one of which can be mapped to the ‘first finger spreader’) pivotably attached to the spreader member (Mills has previously been modified to attach the different fingers 713 to conductive base 700 using a pivotal attachment; par. 26, “The conductive material pieces may be pivotally mounted, slidably mounted, detachably mounted, riveted, pinned or hinged together to form a movable joint.”), wherein the spreader member is configured to conduct thermal energy to the first finger spreader (Abstract, “A metallic conductive material is positioned in thermal contact with at least one Peltier cell whereby the heating and cooling effect generated at an active face of the Peltier cell is conducted and distributed over the surface area of the conductive material.”; further par. 62 discloses the ‘conductive material’ is in part comprised of the various fingers); and a second finger spreader (Fig. 7, plurality of fingers 713 one of which can be mapped to the ‘second finger spreader’), wherein the first and second finger spreaders are pivotable with respect to the housing (Mills has previously been modified to attach the different fingers 713 to conductive base 700 using a pivotal attachment; par. 26, “The conductive material pieces may be pivotally mounted, slidably mounted, detachably mounted, riveted, pinned or hinged together to form a movable joint.”) and independently from one another (Mills has been modified to provide the different fingers with independent pivotal joints allowing for independent movements).
Mills, as modified, fails to explicitly teach that the heat sink is positioned in the housing.
In the same field of endeavor, Aguiar teaches a temperature control module (Fig. 3, temperature modulation subsystem 120) comprising: a housing (Fig. 4a, shield 123); a controllable temperature element (Fig. 3, temperature controllable layer 121) having a first surface and a second surface, wherein the first surface opposes the second surface (Fig. 6B, showing first and second surfaces 1211 and 1212); a heat sink positioned in the housing and in contact with the first surface of the controllable temperature element (Fig. 3, passive heat transfer element 1221 located within shield 123 and in contact with a non-contact side of temperature control element 121); a fan positioned in the housing (Figs. 11-12, showing active heat transfer element which is a fan located within shield 123) and configured to direct heat away from the heat sink (Par. 56, “The fan can be configured to generate any suitable airflow path through the shield cavity 1231, in order to transfer energy between the passive heat transfer element 1221 and the ambient environment.”); a spreader member (Fig. 11, third layer 116), wherein the controllable temperature element is configured to transfer thermal energy to an upper surface of the spreader member (Par. 72, “a third layer 116 fabricated from a thermally-conductive fabric. The third layer 116 is arranged adjacent to the body region of the user”).
Therefore, in view of Aguiar it would have been obvious to a POSITA at the time that the invention was filed to further modify Mills, as modified, by configuring the housing to encompass all the component of the temperature control module including the heat sink, in order to shield the components of the temperature control module from the external environment, as taught by Aguiar.
Regarding claim 17, Mills, as modified, teaches a temperature control module comprising (Par. 33 and figs. 1-2, thermoelectric module 103): a housing (Fig, 3 and par. 46, material 207 located around the periphery of Peltier cell 206; par. 46, “The heat dissipation means 200 comprises a casing comprising a plurality of vents or heat transfer fins 203.”); a controllable temperature element (Fig. 2, Peltier cell 206; par. 20, “The device further comprises control means configured to control the heating and cooling effect provided by the thermoelectric module”) having a first surface and a second surface (Fig. 2, Peltier cell 206 having an active surface 211 mapped to the ‘second surface’ and an adjacent face 212 mapped to the ‘first surface’), wherein the first surface opposes the second surface (Fig. 2, adjacent face 212 is opposite active surface 211); a heat sink (Fig. 2, heat sink 204) positioned in the housing (Mills has previously been modified in view of Aguiar to position the heat sink within the housing; see Mills, figs. 11-12, passive heat transfer element 1221 positioned within shield 123) and in contact with the first surface of the controllable temperature element (Fig. 2, heat sink 204 is in contact with adjacent face 212); a fan (Fig. 2, fan 200) positioned in the housing (Par. 46, “The heat dissipation means 200 comprises a casing comprising a plurality of vents”) and configured to direct heat away from the heat sink (Par. 47, “The heat transferred to face 212 is absorbed by heat sink 204 and subsequently dissipated by the action of the rotating fan blades 201.”); a spreader member (Fig. 2 and par. 46, ‘A conductive material 209 is positioned in thermal contact with the active face 211 of the Peltier cell.’; fig. 7, conductive material 700), wherein the controllable temperature element is configured to transfer thermal energy to an upper surface of the spreader member (Par. 49, “Accordingly, when operating in a heating mode, heat energy is transferred to the conductive material and subsequently the skin of a patient in contact with the material. When operating in a cooling mode, heat energy is drawn from the conductive material by the Peltier cell 206 via active face 211.”), wherein a lower surface of the spreader member is curved (Par. 52, ‘Accordingly, the conductive material may comprise one or a plurality of bent or curved regions 300, 303, 304 configured to match the curvature and contours of the body part.’; par. 27); a sensor embedded in the spreader member (Fig. 8 and par. 67, ‘One or a plurality of temperature sensors 801 are positioned at Peltier cell 206 and/or selected regions of the conductive material 209, 305.’); and first and second finger spreaders (Fig. 7, plurality of fingers 713, a first of which can be mapped to the ‘first finger spreader’ and a second that can be mapped the ‘second finger spreader’) pivotably attached to the spreader member (Mills has previously been modified to attach the different fingers 713 to conductive base 700 using a pivotal attachment; par. 26, “The conductive material pieces may be pivotally mounted, slidably mounted, detachably mounted, riveted, pinned or hinged together to form a movable joint.”), wherein the spreader member is configured to conduct thermal energy to the first and second finger spreaders (Abstract, “A metallic conductive material is positioned in thermal contact with at least one Peltier cell whereby the heating and cooling effect generated at an active face of the Peltier cell is conducted and distributed over the surface area of the conductive material.”; further par. 62 discloses the ‘conductive material’ is in part comprised of the various fingers), wherein the first and second finger spreaders are pivotable independently between a first position and a second position (Mills has been modified to provide the different fingers with independent pivotal joints allowing for independent movements).
Regarding claims 8, 15 and 19, while Mills teaches a temperature sensor embedded in the spreader member (Fig. 8 and par. 67, One or a plurality of temperature sensors 801 are positioned at Peltier cell 206 and/or selected regions of the conductive material 209, 305.’), Mills fails to teach that the temperature sensor is a thermistor.
Aguiar, however, teaches that the temperature controllable wrap assembly (Abstract), further comprises a temperature sensor which is a thermistor (Par. 65, ‘ The temperature sensor can include any suitable type of temperature sensor, such contact sensors (e.g., thermocouples, thermistors, digital thermometers, analog thermometers, etc.) and non-contact sensors (e.g., infrared thermometers, radiative temperature sensors, scattered emission thermometers, etc.). ’).
Therefore, since both Mills and Aguiar teach different temperature sensing means for use in thermal therapy wraps, it would have been obvious to a POSITA at the time that the invention was filed to substitute one know temperature sensing means for the other in order to achieve the predictable result of a temperature sensing means for use in a thermal therapy wrap. KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 82 USPQ2d 1385 (2007).
Regarding claim 11, Mills, as modified, teaches wherein the spreader member includes first and second opposing edges (Fig. 3, e.g. elongated edges of piece 209) and third and fourth opposing edges (Fig. 3, e.g. short edges of piece 209), but fails to teach wherein the first finger spreader extends outwardly past the first opposing edge and the second finger spreader extends outwardly past the third opposing edge such that the first and second finger spreaders are perpendicular to one another.
The examiner maintains, however, that it would have been obvious to a POSITA at the time that the invention was filed to arrange the different finger members perpendicularly to each other such that they extend outwardly from each other along first and third opposing edges. For instance, Mills discloses a conductive element that is configured to conform around complex body contours and joint surfaces. Therefore, a POSITA would have found it obvious to arrange first and second finger spreaders on adjacent edges such that they extend perpendicular relative to each other to allow the thermal contact area to extend simultaneously along different anatomical planes (e.g. anterior and lateral surfaces of limbs and joints), while preventing mechanical interference between adjacent extending fingers. Such a placement is considered a routine rearrangement of parts and an obvious matter of design choice to achieve a desired thermal coverage with predictable results (In re Kuhle, 526 F.2d 553).
Regarding claim 12, Mills, as modified, further teaches wherein a lower surface of the spreader member is curved (Par. 52, “Accordingly, the conductive material may comprise one or a plurality of bent or curved regions 300, 303, 304 configured to match the curvature and contours of the body part.”).
Regarding claim 13, Mills, as modified, further teaches wherein the first finger spreader is pivotable between a first position and a second position (Par. 26, “The conductive material pieces may be pivotally mounted, slidably mounted, detachably mounted, riveted, pinned or hinged together to form a movable joint.”), wherein in the second position a distal end of the first finger spreader is positioned below the lower surface of the spreader member (Fig. 3, showing piece 305 including its distal end below the lower surface of piece 209 implying that the distal end would inherently be below the lower surface of 209 in the second position. Further, par. 56 discloses that the conductive sections are configured to be bendable to curve around the contours of the human body further lowering the distal end of 305 relative to 209. Similar arguments can also be advanced relative to fingers 713 in fig. 7).
Regarding claim 14, Mills, as modified, further teaches wherein the spreader member includes a knuckle portion, wherein the first finger spreader includes a pin portion that is received in the knuckle portion, and wherein the pin portion is rotatable within the knuckle portion (Fig. 3, showing a pinned joint having a pin portion and a knuckle portion; par. 26, “The conductive material pieces may be pivotally mounted, slidably mounted, detachably mounted, riveted, pinned or hinged together to form a movable joint.”).
Regarding claim 18, Mills, as modified, further teaches wherein, in the second position, distal ends of the first and second finger spreaders are positioned below the lower surface of the spreader member (See the discussion of claim 3, above), wherein the spreader member includes first and second opposing edges and third and fourth opposing edges, wherein the first finger spreader extends outwardly past the first opposing edge and the second finger spreader extends outwardly past the third opposing edge such that the first and second finger spreaders are perpendicular to one another (See the discussion of claim 11, above), wherein the spreader member includes a knuckle portion, wherein the first finger spreader includes a pin portion that is received in the knuckle portion, and wherein the pin portion is rotatable within the knuckle portion (Fig. 3, showing a pinned joint having a pin portion and a knuckle portion; par. 26, “The conductive material pieces may be pivotally mounted, slidably mounted, detachably mounted, riveted, pinned or hinged together to form a movable joint.”).
Regarding claim 20, Mills, as modified, further teaches wherein the controllable temperature element is a thermoelectric cooler (Par. 13, “In order to achieve this, the present invention utilises a thermally conductive material in contact with at least one thermoelectric module.”; Abstract, “A device configured to treat a human or animal body part or limb by providing a heating and/or cooling effect”).
Claim(s) 9 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mills in view of Aguiar, as applied to claims 8, 10-15, 17-20, above, and further in view of Anderson et al. (US 20150223975, “Anderson”).
Regarding claims 9 and 16, while Mills, as modified, teaches a thermistor embedded in the spreader member (See Aguiar, par. 65, ‘ the temperature sensor is flush-mounted with the contact surface of the temperature controllable layer’), Mills, as modified, fails to teach wherein the thermistor is received in a thermistor opening defined in the upper surface of the spreader member, wherein a groove is defined in the upper surface of the spreader member, and wherein a wire extends from the thermistor and through the groove.
Anderson teaches an analogous temperature control assembly (Abstract, ‘Exemplary apparatus and method can be provided for cooling a skin tissue. ’) which includes a thermistor (Par. 91, ‘The temperature sensor 410 can include, e.g., one or more thermocouples, thermistors, resistance temperature detectors (RTDs), or the like.’) which is received in a thermistor opening (Par. 90, ‘For example, the temperature sensor 410 can be provided in a small groove or recess’) defined on a top surface of a contact element (Fig. 4B and par. 90, ‘and a further temperature sensor 410 provided at a proximal portion of the contact element 110, e.g., adjacent to or close to the cooling arrangement 120 (not shown).’).
Therefore, in view of Anderson it would have been obvious to a POSITA at the time that the invention was filed to further modify Mills, as modified, by providing the thermistor on a top surface of the heat spreader, to directly monitor the interface temperature between the thermoelectric element and the spreader member, thereby facilitating temperature feedback control of the thermoelectric element, as taught by Anderson.
Further, it would have been obvious to a POSITA at the time that the invention was filed to embed the thermistor into a thermistor opening on the top surface of the spreader member, as taught by Anderson, in order to ensure that the thermistor does not protrude outwards from the top surface, thereby facilitating optimal contact between the thermoelectric element and the spreader member.
Further, while Anderson does not explicitly teach that the sensor’s connecting wire extends through the groove, Anderson implicitly teaches this feature since the sensor’s wiring must extend at least in part through the groove to connect the sensor with the control circuitry.
Further, a POSTIA would be highly motivated to extend the wire through the groove housing the sensor to secure and protect the wiring from damage, and to ensure proper contact between the thermoelectric element and the spreader member. For instance, a POSITA would recognize that if the wires were provided sandwiched between the thermoelectric element and the spreader member, thermal contact between these elements would be broken thus significantly reducing the effectiveness of the temperature transfer between the thermoelectric element and the spreader member. Therefore, a POSITA would naturally be led to locate the sensor in the preexisting sensor grooves as a matter of obvious design choice and routine rearrangement of parts to ensure proper thermal contact between the thermoelectric element and proper operation of the device (In re Kuhle, 526 F.2d 553).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 rare rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,571,331 (‘331).
Regarding application claim 1, the main difference between application claim 1 and claim 1 of ‘331 is the omission of the ‘main control module’ by the application claim. Therefore, application claim 1 represents a broader scope than that recited by the patent claim and it would be impossible to make or use application claim 1 without infringing upon claim of 1 of ‘331.
Regarding application claim 10, the claim is similarly broader in scope compared to claim 11 of ‘331 and is therefore rejected.
Regarding application claim 17, the claim is similarly broader in scope compared to claim 17 of ‘331 and is therefore rejected.
Further, application claims 2-9, 11-16 and 18-20 are rejected based on patent claims 2-11, 11-17 and 17-19, respectively.
Conclusion
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ADAM JOSEPH. AVIGAN
Examiner
Art Unit 3739
/ADAM J AVIGAN/Examiner, Art Unit 3794
/JOSEPH A STOKLOSA/Supervisory Patent Examiner, Art Unit 3794
Prosecution Insights