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 .
Reply Under 37 CFR 1.111
The submission of the reply filed on 10/14/2025 to the non-final Office action of 07/14/2025 is acknowledged. The Office action on currently pending claims 1-14 follows.
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 1-14 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 1 and 8 recite the limitations: “wherein the branching member is in contact with the first cooling member”. However the claims do not specify what kind of “contact” is being referred to (i.e., physical, electrical, thermal, etc. ?), thus rendering said independent claims 1 and 8 and all claims dependent therefrom indefinite. The same goes for dependent claims 4, 5, 11, and 12.
Appropriate corrections are required. Applicant’s cooperation is requested in correcting of any remaining problems and informalities of which Applicant may become aware in the claims.
The remaining dependent claims have been also rejected along with said claims 1 and 8 since they inherit the aforementioned problems of the parent claim(s).
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 1-14, as best understood, are rejected under 35 U.S.C. 102(a)(1) as anticipated by WO 2020/234600 to Edmunds et al. (hereafter “Edmunds”, cited in IDS) or, in the alternative, under 35 U.S.C. 103 as obvious over Edmunds in view of JP 2017-33427 to Kazuhito (cited in IDS).
Regarding claims 1 and 8, as best understood, Edmunds discloses a cooling apparatus (Fig. 18) arranged inside a housing (1420) that has a plurality of modules installed therein (p. 41, ll. 6-9), each module having an electronic circuit board (p. 27, ll. 21-23) including a heat-generating member and a cooling member that receives heat from the heat-generating member and cools the heat-generating member (p. 27, ll. 20-21) using a heat medium (see “liquid coolant”, p. 46, ll. 14-24), the cooling apparatus comprising: a first flexible (p. 14, ll. 1-2) pipe (1550) at least a part of which is arranged inside the housing (1420) and through which the heat medium supplied from an outside of the housing passes; a second flexible pipe (1430a); and a branching member (1570a) that causes the heat medium to branch from the first flexible pipe (1550) into the first cooling member (1401b) of one of the plurality of modules and the second flexible pipe (1430a), the second flexible pipe (1430a) supplying the heat medium to a second cooling member (1401a) of another module of the plurality of modules, wherein the branching member (1570a) is in (thermal) contact (via the second flexible pipe (1430a)) with the first cooling member (1401).
Alternatively, Kazuhito discloses the liquid cooling arrangement comprising: the branching member provided together (i.e., integrally formed with) the cooling member (see upper pipe (20) & radiator (10), Fig. 3).
It would have been obvious to a person of the ordinary skill in related arts before the effective filing date of the claimed invention to have utilized the approach of Kazuhito in the cooling apparatus of Edmunds by implementing the branching member provided together (i.e., integrally formed with) the cooling member, in order to decrease the number of pipes, thus simplifying the assembly, increasing reliability, and saving production costs of the cooling apparatus. 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 claims 2 and 9, as best understood, Edmunds discloses that the first flexible pipe (1550) has a pipe diameter larger than a pipe diameter of the second flexible pipe (1430a) (p. 44, ll. 4-8).
Regarding claims 3 and 10, as best understood, Edmunds discloses a joining member (1570b) that joins the heat medium discharged from the first cooling member (1401a) and the heat medium discharged from the second cooling member (1401b).
Regarding claims 4 and 11, as best understood, Edmunds discloses that the joining member (1570b) joins the heat medium flowing in from a third flexible pipe (1440a) and the heat medium discharged from the second cooling member (1401b), the third flexible pipe (1440a) being in (thermal) contact with the second cooling member (1401b), the heat medium discharged from the first cooling member passing through the third flexible pipe (Fig. 18).
Regarding claims 5 and 12, as best understood, Edmunds discloses that the joining member (1570b) joins the heat medium flowing in from a third flexible pipe (1430b) and the heat medium discharged from the first cooling member (1401a), the third flexible pipe being in (thermal) contact with the first cooling member, the heat medium discharged from the second cooling member (1401b) passing through the third flexible pipe (Fig. 18).
Regarding claims 6, 7, 13, and 14, as best understood, Edmunds teaches conventionality of coupling and branching fitting members for piping (e.g., see Figs. 1-3, 6-12c, 18-22, etc., members (150, 645, 1570, 1220, 1915, etc.).
Therefore, it would have been obvious to a person of the ordinary skill in related arts before the effective filing date of the claimed invention to have utilized the coupling and branching fitting members to implement any desired pipe connections and heat medium routings in Edmunds, including as claimed, in order to achieve desired heat medium distribution and most effective cooling, since 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 of the shape of the heat medium routing via various pipe(s) interconnections and layouts (utilized the coupling and branching fitting members) would have been also obvious to one of the ordinary skill before the effective filing date of the claimed invention, since the rational that a particular shape is a design choice may be found in legal precedent. See In re Dailey, 357 F.2d669, 149 USPQ 47 (CCPA 1966).
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
The gist of the arguments pertained to the anticipatory rejection is that, allegedly, “Fig. 18 of Edmunds fails to disclose “the branching member [being] contact [sic] with the first cooling member.” Therefore, Edmunds fails to anticipate the features of claim 1.”
As stated earlier in the 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, rejection, the claims do not specify what kind of “contact” is being referred to (i.e., physical, electrical, thermal, etc. ?), Therefore, as best understood, the Office has interpreted that said “contact” is thermal. Accordingly, contrary to the Applicant’s possiiton, Edmunds fully anticipates claim 1. The claim(s) are broader than argued.
Furthermore, regarding the obviousness rejection, Applicant contends that, allegedly, “the modification of Edmunds based on Kazuhito would render Edmunds inoperable for its intended purpose, and would destroy its intended function” because allegedly, “Applying the technology of Kazuhito to the system of Edmunds would obstruct the arrangement of the conduits and the couplings. That is applying the couplings of Kazuhito to the conduits of Edmunds would obstruct supply of water necessary for cooling, which would remove the ability to perform the cooling function. Therefore, when the technology of Kazuhito is applied to the system of Edmunds, the system of Edmunds would be rendered inoperable for its intended purpose, and its intended function would be destroyed. Therefore, there would not be any motivation to modify Edmunds based on Kazuhito.”
The Office disagrees with the aforementioned Applicant’s conclusory statement. On the contrary, one of the ordinary skill in related arts before the effective filing date of the claimed invention, would have been able to deduce from the teachings of Kazuhito how to modify to Edmunds so as to avoid the aforementioned alleged drawbacks and achieve the benefits as explained above in the body of the rejection.
The Office reminds Applicant that “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.... Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” See In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). See also In re Sneed, 710 F.2d 1544, 1550, 218 USPQ 385, 389 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.”); and In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”). Also, Applicant is reminded that KSR v. Teleflex forecloses the argument that a specific teaching, suggestion or motivation is required to support a finding of obviousness. See the Board decision Ex parte Smith, --USPQ2d--, slip op. at 20, (Bd. Pat. App. & Inter. June 25, 2007) (citing KSR, 82 USPQ2d at 1396).
In view of the above the rejection is hereby maintained.
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 Anatoly Vortman whose telephone number is (571)272-2047. The examiner can normally be reached Monday-Thursday, between 10 am and 8:30 pm. 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
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