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 (RCE) 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/31/2026 has been entered. The Office action on currently pending elected claims 21, 25, 29-30, 34, 37 and 39 follows.
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 21, 25, 29-30, 34, 37 and 39, 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.
Claims 21 and 30 recite the limitations: “a common radiator”, “first (second) thermal pathways in fluid communication with…the common radiator”, and “wherein the first thermal pathways exterior to the common radiator and between the common radiator and the first heat exchanger are entirely physically independent from the second thermal pathways exterior to the common radiator and between the common radiator and the second heat exchanger.” (emphasis added).
The original specification does not provide any support for the aforementioned limitations and does not teach about any “physical independence” of said “first (second) thermal pathways”. To say more, the aforementioned limitations are contradictory, since if said “first (second) thermal pathways” have “common radiator”, then they cannot be “physically independent”, since they (including their portions that are external to the common radiator) are physically interconnected by said “common radiator” at least thermally.
Accordingly, the aforementioned limitations do not have any support in the original specification and constitute an impermissible new matter.
The remaining dependent claims have been also rejected along with said independent claims 21 and 30, since they inherit the aforementioned problems of said independent claims.
Claims 21, 25, 29-30, 34, 37 and 39, 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Independent claims 21 and 30 recite the limitations: “a common radiator”, the “first (second) thermal pathways in fluid communication with…the common radiator”, and “wherein the first thermal pathways exterior to the common radiator and between the common radiator and the first heat exchanger are entirely physically independent from the second thermal pathways exterior to the common radiator and between the common radiator and the second heat exchanger.” (emphasis added).
Relevant portion of the specification teach that the term “independent” means “thermally independent or isolated from one another” (par. [0037], emphasis added)1.
However, the specification does not teach how said thermal and/or physical independence is achieved if the “common radiator” is employed. The presence of the “common radiator” means exactly the opposite, i.e., that said first and second thermal pathways (including their portions that are external to the common radiator) are thermally and physically interconnected via said “common radiator” (i.e., not “entirely physically independent” from one another as claimed).
After considering all of the Wands factors (and specifically, that there is no adequate direction provided by the inventor/applicant, no existence of the working examples (as per the current record), and that there is low predictability of the claimed functions in the relevant arts), the Office has concluded that the quantity of experimentation needed to make or use the invention based on the content of the instant disclosure will be high and undue to a person of the ordinary skill, and therefore, such a person will not be able to make and use the claimed invention without resorting to undue experimentation. See In re Brown, 477 F.2d 946, 177 USPQ 691 (CCPA 1973); In re Ghiron, 442 F.2d 985, 169 USPQ 723 (CCPA 1971).
The remaining dependent claims have been also rejected along with said independent claims 21 and 30, since they inherit the aforementioned problems of said independent claims.
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 21, 25, 29-30, 34, 37 and 39, 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.
Independent claims 21 and 30 recite the limitations: “a common radiator”, “first (second) thermal pathways in fluid communication with…the common radiator”, and ““wherein the first thermal pathways exterior to the common radiator and between the common radiator and the first heat exchanger are entirely physically independent from the second thermal pathways exterior to the common radiator and between the common radiator and the second heat exchanger.” (emphasis added).
The aforementioned limitations are contradictory and render the claims indefinite, since if said “first (second) thermal pathways” have “common radiator”, then they cannot be “entirely physically independent”, since they (including their portions that are external to the common radiator) are physically interconnected by said “common radiator”, at least thermally.
The remaining dependent claims have been also rejected along with said independent claims 21 and 30, since they inherit the aforementioned problems of said independent claims.
Claim Rejections - 35 USC § 102/103
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 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.
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 21, 29, 30, 37, and 39, as best understood, are rejected under 35 U.S.C. 102(a) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US 7, 675, 748 to Matsushima et al. (hereafter “Matsushima”).
Regarding claims 21, 30, and 37, as best understood, Matsushima discloses a device (Figs. 11, 14), comprising: a first heat generating element (26) and a second heat generating element (26) disposed on a support structure (27, 31); and a cooling system comprising: a heat transfer system, comprising: a first heat exchanger (100) disposed adjacent to the first heat generating element; a second heat exchanger (100) disposed adjacent to the second heat generating element; a common radiator (102); a fan (33, 34) disposed adjacent to the common radiator; a first heat transfer circuit having first thermal pathways (101) in fluid communication with the first heat exchanger, and the common radiator; a second heat transfer circuit having second thermal pathways (101) in fluid communication with the second heat exchanger and the common radiator; a pump (107) in fluid communication with the first heat transfer circuit and the second heat transfer circuit; and a motor (inherently present) having an output shaft coupled with the fan (inherently), wherein the first thermal pathways (101) exterior to the common radiator between the common radiator (102) and the first heat exchanger (100) are physically independent (at least partially) from the second thermal pathways (101) exterior to the common radiator and between the common radiator (102) and the second heat exchanger (100).
Examiner's Note: the preamble limitations “a portable device” and “for a portable device” are directed to the intended use, and inasmuch as it imparts any additional structure, and absent any evidence to the contrary, the device of Matsushima is capable of acting in such a manner. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. See Ex parte Masham, 2 USPQ2d 1647 (1987). If the prior art structure is capable of performing the intended use, as in the instant case, then it meets the claim. See In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) and In re Otto, 312 F.2d 937, 939, 136 USPQ 458, 459 (CCPA 1963). In view of the above, these intended use limitations do not have any significant patentable weight.
Alternatively, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make the device of Matsushima a portable one, in order to simplify maintenance, since it has been held that making an old device portable or movable without producing any new and unexpected result involves only routine skill in the art. See In re Lindberg, 93 USPQ 23 (CCPA 1952). Also, it should be recognized that the cooling system of Malone would perform exactly the same in a portable device (e.g., laptop computer, notebook, etc.).
Regarding claims 29 and 39, as best understood, Matsushima discloses that the first thermal pathways comprise: a first conduit (101) fluidly connected to a fluid inlet port of the first heat exchanger (100), the first conduit configured to convey, to the first heat exchanger, a liquid at a first temperature; and a second conduit (101) fluidly connected to a fluid outlet port of the first heat exchanger, the second conduit configured to convey, away from the first heat exchanger, the liquid at a second temperature different from the first temperature; and/or the second thermal pathways comprise: a first conduit (101) fluidly connected to a fluid inlet port of the second heat exchanger (100), the first conduit configured to convey, to the second heat exchanger, a liquid at a third temperature; and a second conduit fluidly connected to a fluid outlet port of the second heat exchanger (100), the second conduit configured to convey, away from the second heat exchanger, the liquid at a fourth temperature different from the third temperature (the aforementioned differences in temperature would inherently occur due to the fact that the incoming cooling fluid will be warmed-up by accepting heat dissipated by the heat generating elements (26)).
Claim Rejections - 35 USC § 103
Claims 25 and 34, as best understood, are rejected under 35 U.S.C. 103 as being unpatentable over Matsushima in view of US 2002/0075645 to Kitano et al. (hereafter “Kitano”, cited in IDS).
Regarding claims 25 and 34, Matsushima does not disclose that the pump includes a piezoelectric pump.
Kitano discloses (Figs. 1-3) a liquid cooling arrangement for a portable computer comprising a piezoelectric pump (1) for the benefits of achieving small-sizing, low electric power consumption and low noises (par. [0014] and [0025]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the cooling system in the device of Matsushima with a piezoelectric pump, as taught by Kitano, for the benefits of achieving small-sizing, low electric power consumption and low noises (Kitano, par. [0014] and [0025]). Also, all claimed elements were known in the prior art and one skilled in the art could have combined / modified the elements as claimed by known methods with no change in their respective functions, and the combination / modification would have yielded predictable results to one of ordinary skill in the art before the effective filing date of the claimed invention. See KSR International Co. v. Teleflex Inc., 550 U.S.___, 82 USPQ2d 1385 (2007).
Response to Arguments
Applicant’s arguments have been considered but are not persuasive. Amended claims, as best understood (see the 35 USC 112 rejections above), are still read on references of record as explained above in the body of the rejection.
The Office would like to emphasize that since the “first (second) thermal pathways” have “common radiator”, they cannot be “entirely physically independent”, because they (including their portions that are external to the common radiator) are physically interconnected by said “common radiator” at least thermally. Thermal coupling is itself a physical interaction: the temperature or heat output of the first thermal pathway affects the second one and vise versa, i.e., they are thermally and physically dependent. Claiming thermally coupled pathways (including their portions that are external to the common radiator) as “entirely physically independent” is therefore technically incorrect and internally contradictory.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Anatoly Vortman whose telephone number is (571)272-2047. The examiner can normally be reached Monday-Thursday, between 10 am and 8:30 pm.
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/Anatoly Vortman/
Primary Examiner
Art Unit 2841
1 Claims must be given their broadest reasonable interpretation in light of the specification. MPEP 2111
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