DETAILED ACTION
This action is in response to applicant’s amendment received on 03/23/2026. Amended claims 1 and 12 are acknowledged. Claims 1-12 are pending. Claims 13-15 are cancelled.
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 is 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.
Regarding claims 1 and 12, it is unclear if the “a compensating facility” of line 9 of claim 1 is the same as the “a compensating facility” of lines 1-2 of claim 12. Paragraphs 0018 and 0061 of the instant PGPub discuss the limitation claimed in claim 12 as a compensating facility. Paragraph 0078 of the instant PGPub, however, discusses that it is possible to provide an external compensating facility or compensating container in a similar manner to the dosing facility of figure 3, but provided in the final constructed state in the side region of the connecting element.
For the purpose of this examination, claim 1 has been interpreted to mean, in line 9:
--an external compensating container--,
in order to distinguished the external compensating container of claim 1 from the “a compensating facility” of claim 12.
Regarding claims 2-11, the claims are rejected by virtue of their dependency on claim 1.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103:
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 are rejected under 35 U.S.C. 103 as being unpatentable over Hosseini et al. (US 2015/0077941, herein “Hosseini”).
Regarding claim 1, Hosseini discloses:
an apparatus (500) (fig. 5) comprising:
a component (130);
a cooling element (591, 592); and
a connecting element (170, 370) arranged between the component (130) and the cooling element (591, 592) (fig. 5) to thermally couple the cooling element (591, 592) to the component (130) [par. 0063, and par. 0038, as it applies to the embodiment of fig. 5, par. 0051),
wherein the connecting element (170, 370) comprises a porous connecting body (170, 370) including a metal material [par. 0064]; and
pores of the connecting body (170, 370) are at least in part filled with a filling material including a low-melting alloy or a fluorinated organic liquid [par. 0083].
The recitation "an external compensating facility coupled to the connecting element to receive at least a portion of the filling material when the connecting element is compressed" is considered to be a product by process limitation (emphasis added). MPEP 2113 clearly states "Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In this instance, Applicant’s instant specification acknowledges that “different stages of the production of apparatus 1 (of figure 1)…are illustrated in figures 2 to 4” [PG Pub par. 0075], and that “Fig. 4 illustrates a subsequent state of the apparatus 1 in which the cooling element 200 is coupled to the connecting element 300 that has meanwhile been completely filled. In a similar manner as in the example of FIG. 1, the cooling element is pressed using a pressing force F onto the connecting element 300.” [PG Pub par. 0076]. Note here that, regarding figure 1 of the instant specification, par. 0073 of the PGPub states that “…in order to ensure the connection of the cooling element 200 to the connecting element 300, the cooling element 200 is pressed using a pressing force F onto the connecting element 310…this pressing is achieved for example via a hold down system that is not further illustrated here.” Therefore, the recitation "an external compensating facility coupled to the connecting element to receive at least a portion of the filling material when the connecting element is compressed" is considered to be a product by process limitation. In the instant case, the product taught by Hosseini is the same as the final product/apparatus claimed in amended claim 1 and depicted in Applicant’s specification figure 1.
Hosseini does not disclose:
the filling material having a melting point of less than 300°C.
However, Hosseini discloses the uses of different types of filling materials for the purpose of increasing thermal conductivity of the porous connecting body (170, 370) including a liquid thermal paste, a waxy thermal paste, a metal-based paste, a ceramic-based paste, a carbon-based paste, and metals such as copper, aluminum, silver, nickel, molybdenum or alloys thereof (emphasis added) [par. 0083]. It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to have the filling material having a melting point of less than 300°C, as claimed in amended claim 1, as a matter of an obvious design choice and according to the user’s needs, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. MPEP 2144.07.
Regarding claim 2, Hosseini discloses:
the component (130) comprising a power electronics component (130) [par. 0038, as it applies to the embodiment of fig. 5, par. 0051].
Regarding claim 3, Hosseini discloses:
the cooling element (591, 592) comprising a structure enlarging a surface area (fig. 5), but does not disclose the cooling element (591, 592) comprising a metal.
However, in the Office Action dated 06/12/2025, the Examiner took Official Notice that the use and selection of metal materials in the heat management of electronic devices would be within the level of ordinary skill in the art and it is old and well known in the heat exchange art. Applicant has failed to traverse this statement. As such, and in accordance with MPEP §2144.03, the statement is now considered admitted prior art.
Regarding claim 4, Hosseini discloses:
the porous connecting body (170, 370) being open-pored [par. 0066].
Regarding claim 5, Hosseini discloses:
a volume fill factor of the porous connecting body (170, 370) being in a range between 15% and 70% [par. 0065].
Regarding claim 6, Hosseini does not specifically disclose:
a degree of filling of the filling material in the pores of the porous connecting body being between 25% and 80%.
However, the degree of filling of the filling material in the pores of the porous connecting body is considered to be an obvious design expedient, wherein a person of skill in the art, before the effective filing date of the claimed invention, would design the degree of filling of the filling material in the pores of the porous connecting body according to the user's heat transfer requirements. Hosseini discloses, for instance, that the porous connecting body (170, 370) is partially filled with the filling material in order to increase thermal conductivity [par. 0083, lines 15-19].
It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to have a degree of filling of the filling material in the pores of the porous connecting body being between 25% and 80%, since it has been held that, when the general conditions of a claim are disclosed in the prior art, discovering an optimum value of a result effective variable involves only routine skill in the art. (MPEP 2144.05, Section II). Furthermore, the range of 25% to 80% is recognized by the Examiner to be a very broad range, and a range that an ordinarily skilled artisan would have found obvious at the time of the invention.
Regarding claim 7, Hosseini discloses:
the filling material comprising a liquid paste that is metal-based [par. 0083, lines 5-10], but does not disclose the filling material being metal liquid.
It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to have the filling material being just metal liquid since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. MPEP 2144.07.
Regarding claim 8, Hosseini discloses:
the filling material has a thermal conductivity of at least 10 W/m·K (known for copper or aluminum, for instance, cited in par. 0083].
Regarding claims 9-11, Hosseini does not disclose:
the filling material having a melting point between 200°C and 300°C, as claimed in claim 9; between 100°C and 200°C, as claimed in claim 10; and, below 100°C, as claimed in claim 11.
However, Hosseini discloses the uses of different types of filling materials for the purpose of increasing thermal conductivity of the porous connecting body (170, 370) including a liquid thermal paste, a waxy thermal paste, a metal-based paste, a ceramic-based paste, a carbon-based paste, and metals such as copper, aluminum, silver, nickel, molybdenum or alloys thereof [par. 0083]. It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to have the filling material having a melting point between 200°C and 300°C, as claimed in claim 9; between 100°C and 200°C, as claimed in claim 10; and, below 100°C, as claimed in claim 11, as a matter of an obvious design choice and according to the user’s needs, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. MPEP 2144.07.
Regarding claim 12, Hosseini discloses:
a compensating facility (the portion of the connecting element 170, 370 that is not filled with the filling material) [par. 0083, lines 15-17, “partially filled”] to compensate for a change in volume of the filling material that is contained in the connecting body (170, 370).
MPEP 2114 II clearly states “Apparatus claims cover what a device is, not what a device does" and “A claim containing 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’ if the prior art apparatus teaches all the structural limitations of the claim.” Because Claim 12 fails to further limit the apparatus in terms of structure, but rather only recite further functional limitations, regarding the “to compensate for a change in volume of a filling material that is contained in the connecting body and that is liquid during operation of the apparatus” limitation, the invention as taught by Hosseini is deemed fully capable of performing such function.
Response to Arguments
The rejection of claim 12 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as set forth in the Office Action mailed 01/28/2026 is withdrawn in light of the amendments.
Applicant's arguments filed 03/23/2026 regarding amended claim 1 have been fully considered but they are not persuasive.
In pages 4-5, Applicant merely provides a conclusory statement indicating that the combination of Hosseini and Kabbani does not render claim 1 obvious, providing no arguments to support this (remarks, page 4: “…Applicant respectfully traverses and submits the proposed combination, even if proper, does not render the pending claims obvious”; remarks, page 5: “…Applicant disagrees that Hosseinni discloses that the filling material has a melting point of less than 300°C…”). Further, Kabbani is no longer relied upon to reject claim 1. Please refer to the rejection, above, for a detail explanation on how Hosseini actually reads on amended claim 1.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GUSTAVO A HINCAPIE SERNA whose telephone number is (571)272-6018. The examiner can normally be reached 9am-5:30pm.
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/GUSTAVO A HINCAPIE SERNA/Examiner, Art Unit 3763
/LEN TRAN/Supervisory Patent Examiner, Art Unit 3763
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