Non-Final Rejection
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/4/2026 has been entered. Claims 1, 14, and 15 are amended, and claim 13 cancelled. Claims 1, 4-5, 7, 9-11, and 14-15 are pending.
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.
Claim 15 is 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 15 claims a refrigerant passage, and that
“an inner surface of the base has an uneven structure configured to cause a refrigerant to swirl, the inner surface forming the refrigerant passage, and
a concave portion as the uneven structure is arranged in a region near the plurality of mounting surfaces in the inner surface to form a vortex of the refrigerant at the concave portion.”
Applicant argues that this differs from the prior art, particularly JP ‘486 applied previously, because JP ‘486 causes a vortex and swirl of refrigerant by convex protruding structures, not by concave portions as claimed. Thus, the concave portions specifically causing a vortex is used to distinguish the claims from the art. However, this is not actually shown in the specification.
The specification as originally filed did not mention a vortex or any swirling of refrigerant, at all. The only mention of anything like this is in original claim 6, which stated that “an inner surface of the base has an uneven structure configured to cause a refrigerant to swirl, the inner surface forming the refrigerant passage.” Paragraph [0058] (see the PGPUB) also states that “by arranging the concave portions 35c1 as described above [re: Fig. 6], it is possible to disturb the flow of the refrigerant in the refrigerant passage.” Disturbing the flow is not necessarily a swirling or a vortex, so we are back to claim 6 being the only disclosure. The “uneven structure” of claim 6 is plainly shown in Fig. 6, with concave portions 35c1 shown. This is enough to support the limitations of claims 1 and 14, which require “an inner surface having an uneven structure comprising a plurality of concave portions each arranged near a respective mounting surface and configured to cause the refrigerant to swirl near the respective mounting surface, each concave portion having a flat surface parallel to a respective mounting surface.” This limitation is like that of original claim 6 and then also puts into words what is shown in Fig. 6. There is no problem with these other claims.
The difference is that the concave portions explicitly forming a vortex is different than the uneven surface causing a swirl. This can be seen by looking at applicant’s arguments against JP ‘486. That reference has convex protrusions, which are uneven surfaces, causing a swirl, enough to meet original claim 6. But applicant argues (correctly) that this is not the same as concave portions forming a vortex. Since JP ‘486 can meet one and not the other, this shows that the disclosures are different enough that one does not provide support for the other. This limitation of claim 15 is not disclosed in the application as originally filed, and differs from what was originally filed, so it is new matter.
Allowable Subject Matter
Claims 1, 4-5, 7, 9-11, and 14 allowed. The following is a statement of reasons for the indication of allowable subject matter:
There is not taught or disclosed in the prior art the light emitting device as in claim 1 or the fiber laser as in claim 14, having a refrigerant passage as claimed including, inter alia, an inner surface having an uneven structure comprising a plurality of concave portions each arranged near a respective mounting surface and configured to cause the refrigerant to swirl near the respective mounting surface, each concave portion having a flat surface parallel to a respective mounting surface. The JP ‘486 reference applied previously to the inner surface limitation does not have such a structure.
Response to Arguments
Applicant's arguments filed with the 5/4/2026 response have been fully considered. As to the prior claim objection warning, 112 rejection, and art rejections, they are generally persuasive that the amendments overcome the prior issues. A new issue is presented above as to claim 15.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to James Menefee whose telephone number is (571)272-1944. The examiner can normally be reached M-F 7-4.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MinSun Harvey can be reached at (571) 272-1835. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES A MENEFEE/Primary Examiner, Art Unit 2828
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