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 on 04/06/2026 after final rejection of 12/04/2025 and Advisory action of 03/10/2026. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/04/2026 has been entered. The Office action on currently pending claims 1-14 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 1-14, 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.
Independent claims 1 and 8 recite new limitations: “wherein the branching member is in physical contact with the first cooling member”.
There is no support in the original specification for the aforementioned limitations. The original specification teaches only that “the branching member is provided together with the cooling member.” (e.g., see pars. [0016], [0020], [0023], [0024], etc.). The terms “provided together” are way broader than claimed “in physical contact”.
Accordingly, the aforementioned newly added limitations constitute an impermissible new matter.
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 physical 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, in physical contact, etc.) 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.
Regarding anticipatory rejection, the Applicant contends that, allegedly, “Edmunds and Kazuhito, taken individually or in any combination, fail to disclose "wherein the branching member is in physical contact with the first cooling member”.
In response the Office would like to point out that limitation “in physical contact” is pretty broad and involves various physical interactions (e.g., mechanical, magnetic, thermal, etc.). In the instant case the branching member (1570a) of Edmunds is in physical contact (via the second flexible pipe (1430a)) with the first cooling member (1401), since said flexible pipe (1430a) provides mechanical, thermal, etc. physical interactions/coupling therebetween. To say more, the claims do not even recite “in direct physical contact”, but just very broad “in physical contact”. The claims are broader that argued. Also, the limitation “in physical contact” constitutes impermissible new matter as explained above in the body of the rejection.
Furthermore, regarding the alternative obviousness rejection, the Applicant contends that, allegedly, “Even if Edmunds and Kazuhito were combined, for the same reasons discussed in the Amendment under 37 C.F.R. § 1.111 filed on October 14, 2025, one of ordinary skill in the art would not be able to arrive at the claimed embodiment without substantially undermining the principle operations of the cited art.”
The Office disagrees with the aforementioned Applicant’s conclusory statement and would like to reiterate that 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
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/Anatoly Vortman/
Primary Examiner
Art Unit 2841
Prosecution Insights