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 .
Election/Restrictions
Applicant’s election of the invention I, claims 1-16 in the reply filed on 03/02/2026 is acknowledged. Because Applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). The Office action on claims 1-16 follows.
Information Disclosure Statement
The information disclosure statement (IDS) filed on 09/23/2023 fails to comply with 37 CFR 1.98(a)(3)(ii), which requires a copy of the written English-language translation of a non-English-language document. There is no written English-language translation of the Non-Patent Literature (NPL) document listed in the aforementioned IDS (i.e., German Search Report for Application No. DE 10 2022 124 513.6 mailed March 1, 2023). Therefore, said NPL document has not been considered and has been crossed through on the IDS form.
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 1-16, 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.
Regarding claim 1, the claim recites an open-ended limitation “configured to press” (line. 13) while reciting the structure of the assembled end product. This renders the claim indefinite, since it’s not clear, whether said “pressing” is actually taking place 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.
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). 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). Applicant must amend the claim to recite positive and explicit limitation (e.g., “pressing”, “presses”, etc.).
Regarding claim 11, the limitation “the plane” lacks proper antecedent basis.
The remaining dependent claims have been also rejected since they inherit the aforementioned problem(s) of the parent claim(s).
Appropriate corrections are required. Applicant’s cooperation is hereby requested with reviewing the claims and correcting all remaining problems and informalities present in the claims, but not made of record above.
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.
Claims 1-10, and 12, as best understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2020/ 0203301 to Yu et al. (hereafter “Yu”, cited in IDS).
Regarding claim 1, Yu discloses a circuit board arrangement (Fig. 7) comprising: a circuit board (110) having an upper side (110-TS) and an underside (108-TS); at least one electrical module (106A) having an upper side and an underside (Fig. 7), the upper side of the at least one electrical module (106A) being arranged on the underside (108-TS) of the circuit board (110); a heat sink (TM); means for providing a pressure (301, 302), with which the underside of the at least one electrical module (106A) is pressed against the heat sink (TM); and a heat-conducting material (104B) that is arranged between the underside of the at least one electrical module (106A) and the heat sink (TM), wherein the at least one electrical module (106A) is embedded in an encapsulating material (108’) that terminates with the underside of the at least one electrical module (106A) without covering the underside of the at least one electrical module (106A), and wherein the encapsulating material (108’) is provided and configured to press the heat- conducting material (104B) against the heat sink (TM) in a region adjacent to the at least one electrical module (106A).
Alternative interpretation.
Regarding claim 1, Yu discloses a circuit board arrangement (Fig. 8) comprising: a circuit board (SB) having an upper side and an underside (Fig. 8); at least one electrical module (106A) having an upper side and an underside (Fig. 8), the upper side of the at least one electrical module (106A) being arranged on the underside of the circuit board (SB); a heat sink (TM); means for providing a pressure (301, 302), with which the underside of the at least one electrical module (106A) is pressed against the heat sink (TM); and a heat-conducting material (104B) that is arranged between the underside of the at least one electrical module (106A) and the heat sink (TM), wherein the at least one electrical module (106A) is embedded in an encapsulating material (108’) that terminates with the underside of the at least one electrical module (106A) without covering the underside of the at least one electrical module (106A), and wherein the encapsulating material (108’) is provided and configured to press the heat- conducting material (104B) against the heat sink (TM) in a region adjacent to the at least one electrical module (106A).
Regarding claim 2, Yu discloses that the at least one electrical module comprises a plurality of electrical modules (106A) that are embedded in the encapsulating material (108’), and wherein the encapsulating material is provided and configured to press the heat-conducting material (104B) against the heat sink (TM) in a region between the plurality of electrical modules (Figs, 7, 8; pars. [0013], [0014]).
Regarding claim 3, Yu discloses that the encapsulating material (108’) extends as far as the underside (108-TS) of the circuit board (110), at least in some section or sections (Fig. 7).
Regarding claim 4, Yu discloses that the at least one electrical module (106A) has electrical solder pads (106a-2) formed on the upper side of the at least one electrical module, wherein each of the electrical solder pads is in contact via a solder layer (106a-4) with an associated electrical solder pad (110b) of the circuit board (110), and wherein in a region adjacent to the electrical solder pads, the encapsulating material (106a-5) extends also in a gap between the underside (108-TS) of the circuit board (110) and the upper side of the at least one electrical module (Fig. 7).
Regarding claim 5, Yu discloses that the encapsulating material (108’) surrounds and electrically insulates regions on the underside (108-TS) of the circuit board (110) in which the circuit board (110) forms vias (i.e., between (110b) and (110c), Fig. 7).
Regarding claims 6-9, Yu discloses that the encapsulating material (108’) is configured as a hard encapsulating compound epoxy resin with the Shore D hardness greater than 10 which is harder than a hardness of the heat-conducting material (104B) (par. [0011], par. [0018], e.g., see “epoxy resin”, etc.).
Regarding claim 10, Yu discloses that the at least one electrical module (106A) is embedded in the encapsulating material (108’) by transfer molding or injection molding (pars. [0017], [0032], [0033], claim 18).
Examiner’s Note: Regarding claim 10, please note, that the method of forming the device (i.e., transfer or injection molding) is not germane to the issue of patentability of the device itself. Even though the claim is limited by and defined by the recited process, the determination of patentability of the product is based on the product itself, and 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 re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). Therefore, though the limitations of claim 10 have been met by Yu, they have no actual patentable weight.
Regarding claim 12, Yu discloses that the means for providing a pressure, with which the underside of the at least one electrical module (106A) is pressed against the heat sink (TM), comprise screws (301) that extend from the upper side (110-TS) of the circuit board (110) into the heat sink (TM) and are screwed into the heat sink (Fig. 7).
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.
Claim 11 and alternatively, claims 6-9 and 12, are rejected under 35 U.S.C. 103 as being unpatentable over Yu taken alone.
Regarding claim 11, and alternatively regarding claims 6-9, 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 selected any suitable known materials recited in the claims, in order to achieve desired thermal and mechanical characteristics of the device of Yu, while not exceeding its targeted production costs, 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. See In re Leshin, 125 USPQ 416.
Alternatively, regarding claim 12, 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 screws (301) been screwed directly into the heat sink (TM), in order to eliminate nuts (302) and simplify assembly of the device, as an obvious matter of design choice, since it appears that the invention would have performed equally well with such a design. Also, it has been held that an omission of an element and its function (i.e. of the nuts) involves only routine skill in the art and is obvious if the function of the element is not desired and the remaining elements in a combination perform the same functions as before. See Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989), In re Larson, 340 F.2d 965, 144 USPQ 347 (CCPA 1965), In re Karlson, 136 USPQ 184, and In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975). 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 16 is rejected under 35 U.S.C. 103 as being unpatentable over Yu in view of US 2014/0355218 to Vinciarelli et al. (hereafter “Vinciarelli).
Regarding claim 16, Yu does not disclose that the at least one electrical module is arranged in a cavity of the heat sink.
Vinciarelli teaches (Figs. 6 and 7) conventionality of the at least one electrical module (132-2) arranged in a cavity (143-2) of a heat sink (121) to improve structural integrity of the encapsulation and of the entire circuit arrangement (par. [0092]).
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 modified to Yu as taught by Vinciarelli, so the at least one electrical module is arranged in the cavity of the heat sink, in order to predictably improve structural integrity of the encapsulation and of the entire circuit arrangement of Yu (see Vinciarelli, par. [0092]). 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).
Allowable Subject Matter
Claims 13-15 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claims 13-15, the limitations of claim 13 (“wherein the at least one electrical module comprises: a ceramic circuit carrier that has an insulating ceramic layer and a first metallization layer arranged on an upper side of the insulating ceramic layer; and an electrical component that is arranged on an upper side of the first metallization layer and is electrically connected to the upper side of the first metallization layer, wherein the insulating ceramic layer or a second metallization layer formed on an underside of the insulating ceramic layer is connected to the heat sink via the heat- conducting material”) in combination with all of the limitations of the parent claim 1, are believed to render the combined subject matter, and claims 14 and 15 dependent therefrom, allowable over the prior art of record taken alone or in combination.
Conclusion
The additional prior art made of record and not relied upon is considered pertinent to Applicant's disclosure, because of the teachings of various electronic modules comprising circuit boards and heat sinks, wherein said heat sinks cool electronic components disposed on said circuit boards.
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 2835
Prosecution Insights