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 .
Reopening of Prosecution
In view of the Appeal Brief filed on 12/12/2025, PROSECUTION IS HEREBY REOPENED. New ground(s) of rejection are set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
The Office action on currently pending claims 1-12 follows.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/Jayprakash N Gandhi/ Supervisory Patent Examiner, Art Unit 2835
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 1-12 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.
Claims 1 and 12 recite an open-ended clauses: “the accommodation space being configured to receive the airflow generator therein” (last two lines of the claims)”. The open-ended limitation “configured to” renders the claims indefinite. Indeed, claims are drawn to an apparatus which includes “an airflow generator” (see line 7 of the claim 1 and line 13 of claim 12). However, the aforementioned limitations make the presence of the airflow generator in the accommodation space optional.
Just because something is “configured to” do something (i.e. is “capable of” doing something), doesn’t actually mean it does it. “[A]pparatus claims cover what a device is, not what a device does.” See Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). Therefore, it’s not clear whether said airflow generator is actually disposed in the accommodation space or not. Language that suggests or makes optional but does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation (MPEP 2111.04 and 2103 (I) (C)). It has been held that the open-ended recitations stating that an element is capable to perform a function (e.g., “configured to”, “adapted to”, etc.) are not the positive limitations but only require the ability to so perform. They do not constitute a limitation in any patentable sense. See In re Hutchison, 69 USPQ 138.
The Office hereby notes that “configured to” does not explicitly denote how features(s) are constructed and/or associated with other claimed limitations; whereas the claim is amenable to two or more plausible claim constructions. If a claim is amenable to two or more plausible claim constructions, then the claim may be deemed indefinite. See Ex parte Miyazaki, 2008 WL 5105055 at *5(BPAI Nov. 19, 2008).
For the examination purposes the Office will interpret that “the accommodation space [
Similar reasoning is applicable to the open-ended limitation “configured to” in line 9 of claim 12, i.e., it’s not clear whether the “plugging portion” is actually inserted “into another of the plurality of electrical connectors of the circuit board” or not. The “electronic assembly” of claim 12 includes both: the “electrical connectors” and the “plugging portion”, but the aforementioned open-ended limitation makes their cooperation optional, thus producing indefiniteness.
Likewise, for the examination purposes the open-ended clause of claim 12: “the plugging portion is configured to be inserted into another of the plurality of electrical connectors of the circuit board” will be interpreted by the Office as: “the plugging portion is [
All dependent claims have been also rejected along with said independent claims 1 and 12, since they inherit the aforementioned problems of said claims 1 and 12.
Applicant’s cooperation is requested in correcting of any remaining problems and informalities of which Applicant may become aware in the claims.
Claim Rejections - 35 USC § 102
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by TW M613132 U to Shih, Shun-Yu, et. al. (hereafter “Shih”, see English translation of record).
Regarding claim 1, Shih discloses (Figs. 1, 2) a water cooling assembly, configured to be mounted at an electrical connector of a circuit board (inherently, see the “expansion card”, “display cards”, “sound cards”, “network cards”, “mother board”, etc. in pars. [0001]-[0005], etc.), the water cooling assembly comprising: a mounting plate (110), comprising a mounting portion (111) and a plugging portion (not numbered, but inherently present, since the assembly is an “expansion card”, see pars. [0001]-[0005], etc.), wherein the plugging portion is connected to a side of the mounting portion (inherently, since it must be positioned at the edge of (110)), and the plugging portion is configured to be inserted into the electrical connector of the circuit board (inherently, see the “expansion card”, “display cards”, “sound cards”, “network cards”, “mother board”, etc. in pars. [0001]-[0005], etc.); a water cooling radiator (220), fastened to the mounting portion (111) of the mounting plate (110); and an airflow generator (300); wherein the water cooling radiator comprises an accommodation space (S), the accommodation space being configured to receive the airflow generator therein (Fig. 1).
Claim Rejections - 35 USC § 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 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 1-12, as best understood, are rejected under 35 U.S.C. 103 as being unpatentable over EP 3686714 to Saksager (of record) in view of TW M613132 U to Shih, Shun-Yu, et. al. (hereafter “Shih”, see English translation of record) or US 7, 382, 616 to Stefanoski (of record).
Regarding claim 1, Saksager discloses (Figs. 2-5) a water cooling assembly (100), configured to be mounted at an electrical connector of a circuit board (11) (see the PCIe connector (103), par. [0054]), the water cooling assembly comprising: a mounting plate (101), comprising a mounting portion and a plugging portion (103) (Fig. 3), wherein the plugging portion is connected to a side of the mounting portion (Fig. 3), and the plugging portion is configured to be inserted into the electrical connector of the circuit board (11); a water cooling radiator (130), fastened to the mounting portion of the mounting plate (101); and an airflow generator (110) wherein the water cooling radiator comprises an accommodation space (141).
Regarding claim 12, Saksager discloses (Figs. 2-5) an electronic assembly (10), comprising: a circuit board (11), having a plurality of electrical connectors (12-14) (par. [0063]); an interface card (1), inserted into and electrically connected to one of the plurality of electrical connectors (12) of the circuit board (11); a water cooling heatsink (2), mounted on the interface card (1); and a water cooling assembly (100), comprising: a mounting plate (101), comprising a mounting portion and a plugging portion (103), wherein the plugging portion is connected to a side of the mounting portion (Fig. 3), and the plugging portion (103) is inserted into another (one) of the plurality of electrical connectors (14) of the circuit board (11); and a water cooling radiator (130), fastened to the mounting portion of the mounting plate (101) and being in fluid communication with the water cooling heatsink via pipes (4, 6); and an airflow generator (110) wherein the water cooling radiator comprises an accommodation space (141).
Regarding claims 1 and 12, Saksager does not disclose that the accommodation space receives the airflow generator therein.
Shih discloses (Figs. 1, 2) a radiator (220) wherein the airflow generator (300) is located in the accommodation space (S) between two heat dissipation channel structures (223, 224) for the benefits of more even and efficient cooling air distribution (par. [0056]).
Alternatively, Stefanoski also discloses (Fig. 3B) a radiator (380, 315) wherein the airflow generator (325) is located in the accommodation space between two heat dissipation structures (315a, 315b) for the benefits of more even and efficient cooling air distribution (par. col. 5, ll. 44-63).
It would have been obvious to a person of the ordinary skill in cooling art before the effective filing date of the claimed invention to have modified to Saksager according to the teachings of Shih or Stefanoski by locating the airflow generator in the accommodation space between the second heat dissipation channel structure and the third heat dissipation channel structure (e.g., by changing dimensions of relevant components, i.e., of the radiator bridges and spaces therebetween), for the benefits of more even and efficient cooling air distribution (Shih, par. [0056]; Stefanoski, col. 5, ll. 44-63). 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). Also, a change in size (i.e., of the radiator bridges and spaces therebetween) is generally recognized as being within the level of ordinary skill in the art. See In re Rose, 105 USPQ 237 (CCPA 1955); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976); Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Regarding claim 2, Saksager discloses that the mounting plate (101) is a dummy interface card (see “The electrical connections shown on the PCI-e plug are preferred but not required”, par. [0054]).
Regarding claim 3, Saksager discloses that an appearance of the plugging portion (103) is the same as an appearance of a PCIe electrical connecting portion (par. [0054]).
Regarding claim 4, Saksager discloses (Figs. 2-4) that the water cooling radiator (130) comprises a first water tank (120, 121, 123, 125), a second tank (120, 122, 124), a first heat dissipation channel structure (131), a second heat dissipation channel structure (132), a third heat dissipation channel structure (133) and a fourth heat dissipation channel structure (134), the first water tank has a first chamber (121), a second chamber(123) and a third chamber (125) which are not in fluid communication with each other directly, the second water tank has a fourth chamber (122) and a fifth chamber (124) which are not in fluid communication with each other directly, two opposite ends of the first heat dissipation channel structure (131) are in fluid communication with the first chamber (121) of the first water tank and the fourth chamber (122) of the second water tank, respectively, two opposite ends of the second heat dissipation channel structure (132) are in fluid communication with the second chamber (123) of the first water tank and the fourth chamber (122) of the second water tank, respectively, two opposite ends of the third heat dissipation channel structure (133) are in fluid communication with the second chamber (123) of the first water tank and the fifth chamber (124) of the second water tank, respectively, and two opposite ends of the fourth heat dissipation channel structure (134) are in fluid communication with the third chamber (125) of the first water tank and the fifth chamber (124) of the second water tank, respectively (Figs. 2-4).
Regarding claim 5, Saksager discloses that each of the first heat dissipation channel structure (131) to the fourth heat dissipation channel structure (134) has a plurality of heat dissipation structures (150).
Regarding claim 8, Saksager discloses that the second heat dissipation channel structure (132) and the third heat dissipation channel structure (133) are spaced apart from each other so as to form an accommodation space (141) therebetween (Fig. 3).
Regarding claim 9, Saksager as modified by Shih discloses (Fig. 3), wherein the airflow generator (110) is located in the accommodation space, and the airflow generator is configured to generate an airflow flowing through the first heat dissipation channel structure (131) to the fourth heat dissipation channel structure (134) of the water cooling radiator (130).
Regarding claim 10, Saksager discloses that the water cooling radiator (130) further comprises a liquid inlet connector (126) and a liquid outlet connector (127), the liquid inlet connector and the liquid outlet connector are mounted on the first water tank (120, 121, 123, 125) , and the liquid inlet connector and the liquid outlet connector are in fluid communication with the first chamber (121) and the third chamber (125), respectively (Fig. 3).
Regarding claims 6 and 7, Saksager as modified by Shih or Stefanoski does not disclose that distance between each two of the plurality of heat dissipation structures (150) that are adjacent to each other of the first heat dissipation channel structure (131) and the fourth heat dissipation channel structure (134) (i.e., 2.6 mm) is smaller than a distance between each two of the plurality of heat dissipation structures (150) that are adjacent to each other of the second heat dissipation channel structure (132) and the third heat dissipation channel structure (133) (i.e., 3.2 mm).
It would have been obvious to a person of the ordinary skill in cooling art before the effective filing date of the claimed invention to have adjusted said distances in any suitable optimal way, including as claimed, in order to achieve the most efficient and uniform heat dissipation, since, it has been held that discovering an optimum value of a result (the result is effectiveness and uniformity of heat dissipation) effective variable (the variable is the aforementioned claimed distance) involves only routine skill in the art. See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Also, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges (i.e., for said claimed distances) involves only routine skill in the art. See In re Aller, 105 USPQ 233. Also, a change in size (i.e., of the size of the gap between the heat dissipation structures) is generally recognized as being within the level of ordinary skill in the art. See In re Rose, 105 USPQ 237 (CCPA 1955); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976); Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). 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).
Regarding claim 11, Saksager or Saksager-Shih combination does not disclose a cover, wherein the cover is mounted on the mounting plate, and the cover and the mounting plate surround the water cooling radiator.
Stefanoski discloses (Figs. 3A-3C) a cooling assembly (300) comprising: a fan (325, 335) centrally positioned between two radiators/fins (315a, 315b) and a cover (305) mounted on a mounting plate (320), and the cover and the mounting plate surround the radiators/fins, for the benefits of inducing a swirl effect of the reflected cooling air, thus enhancing cooling efficiency (col. 5, ll. 44-63).
It would have been obvious to a person of the ordinary skill in cooling art before the effective filing date of the claimed invention to have further modified to Saksager-Shih combination according to the teachings of Stefanoski by providing a cover, wherein the cover is mounted on the mounting plate, and the cover and the mounting plate surround the water cooling radiator for the benefits of inducing a swirl effect of the reflected cooling air, thus enhancing cooling efficiency (Stefanoski, col. 5, ll. 44-63). Further, the cover would also provide additional benefit of protecting the inner components of the device from accidental touching and damage. 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).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Shih in view of Saksager.
Regarding claim 12, Shih discloses an electronic assembly Figs. 1, 2, comprising: a circuit board, having a plurality of electrical connectors (inherently, see the “expansion card”, “display cards”, “sound cards”, “network cards”, “mother board”, etc. in pars. [0001]-[0005], etc.); an interface card (100), inserted into and electrically connected to one of the plurality of electrical connectors of the circuit board (see the “expansion card”, “display cards”, “sound cards”, “network cards”, “mother board”, etc. in pars. [0001]-[0005], etc.); a water cooling heatsink (210), mounted on the interface card; a water cooling assembly (210, 220), configured to be mounted at an electrical connector of a circuit board (inherently, see the “expansion card”, “display cards”, “sound cards”, “network cards”, “mother board”, etc. in pars. [0001]-[0005], etc.), the water cooling assembly comprising: a mounting plate (110), comprising a mounting portion (111) and a plugging portion (not numbered, but inherently present, since the assembly is an “expansion card”, see pars. [0001]-[0005], etc.), wherein the plugging portion is connected to a side of the mounting portion (inherently, since it must be positioned at the edge of (110)), and the plugging portion is configured to be inserted into the electrical connector of the circuit board (inherently, see the “expansion card”, “display cards”, “sound cards”, “network cards”, “mother board”, etc. in pars. [0001]-[0005], etc.); a water cooling radiator (220), fastened to the mounting portion (111) of the mounting plate (110); and an airflow generator (300); wherein the water cooling radiator comprises an accommodation space (S), the accommodation space being configured to receive the airflow generator therein (Fig. 1).
Shih does not disclose that the plugging portion of the mounting plate of the water cooling assembly is configured to be inserted into another of the plurality of the electrical connector of the circuit board.
Saksager teaches (Fig. 5) a concept of the liquid cooled expansion (GPU) card (1) and water cooling assembly (100) being inserted in different slots of the circuit board (11) (pars. [0064]-[0065]) for precision cooling and improved cable management (par. [0068]).
It would have been obvious to a person of the ordinary skill in cooling art before the effective filing date of the claimed invention to have modified to Shih according to the teachings of Saksager, so the plugging portion of the mounting plate of the water cooling assembly is configured to be inserted into another of the plurality of the electrical connector of the circuit board (i.e., so the interface card and the water cooling assembly are configured to be inserted in different slots of the circuit board (mother board)), for the benefits of precision cooling and improved cable management (Saksager, par. [0068]). Also, such a design would improve modularity that would allow for the water cooling assembly to be interchangeably employed with various types of expansion cards to be cooled. Also, it has been held that constructing a formerly integral structure (i.e., the expansion card of Shih) in various elements (i.e., separate expansion card to be cooled and the water cooling assembly) involves only routine skill in the art. See In re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961) and Nerwin v. Erlichman, 168 USPQ 177, 179. 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 fully considered but they are not persuasive for essentially the same reasons as presented in the final Office action of 09/16/2025 and advisory action of 11/10/2025.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jayprakash N. Gandhi can be reached at 571-272-3740. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Anatoly Vortman/
Primary Examiner
Art Unit 2835