DETAILED ACTION
Statutory period for response for election/restriction is only 2 months, and not three months on the form.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. § 121:
I. Claims 1-11, drawn to method of manufacturing an electronic control unit, generally classified in H05K 3/00, H05K 3/40, H05K 3/46 and H05K 3/4638.
II. Claims 12-23, drawn to an electronic control unit, generally classified in H05K 1/0203, H05K 7/20509 and H05K 2201/066.
Inventions I and II are directed to related distinct product and process.
The related inventions are distinct if:
(1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect;
(2) the inventions do not overlap in scope, i.e., are mutually exclusive; and
(3) the inventions as claimed are not obvious variants.
See MPEP § 806.05(j).
In the instant case, the inventions as claimed are distinct product and process as;
invention I is drawn to determining a distance by measuring a height difference between top surface of a housing and a top surface of an integrated heat spreader, arranging an upper layer of thermal interface material on the a surface of the integrated heat spreader having a thickness selected based on the distance, and attaching a housing prior to arranging an integrated heat spreader on top of lower layer of thermal interface material.
Invention II however is drawn to an electronic control unit with a printed circuit board including first and second electric component, a first and second integrated heat spreader arranged between the first and second electronic component and a heatsink respectively, and first and second lower layer of thermal interface material arranged between the first and second electric component and the first and the second integrated heat spreader.
Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
The examiner has required restriction between product or apparatus claims and process claims.
Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained.
Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Restriction for examination purposes as indicated is proper because all these inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and examination burden if restriction were not required because one or more of the following reasons apply:
(a) The inventions have acquired a separate status in the art in view of their different classification;
(b) The inventions have acquired a separate status in the art due to their recognized divergent subject matter;
(c) The inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);
(d) The prior art applicable to one invention would not likely be applicable to another invention;
(e) The inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Michael Nye (62, 126) on 01/09/2026 a provisional election was made without traverse to prosecute the invention I. Claims 1-11. Affirmation of this election must be made by applicant in replying to this Office action. Claim 12-23 withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Information Disclosure Statement
The information disclosure statement filed 08/12/2014 has been fully considered and is attached hereto.
Claim Rejections - 35 USC § 102
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 Yoon et al (US 2021/0029855).
Regarding Claim 1, Yoon (In Figs 6-7) disclose a method for manufacturing an electronic control unit (101, ¶ 107, II. 5-10), the method comprising:
providing a printed circuit board (340) with an electric component (341) attached thereon (Fig 6);
arranging a lower layer of thermal interface material (711, ¶ 91, II. 13-17 ) on top of the electric component (341), (Fig 7);
arranging an integrated heat spreader (391), (¶ 6, II. 1-4) on top of the lower layer (711), (Fig 6);
determining a distance (distance between 611 and 391 accommodating 392) of a top surface of the integrated heat spreader (391) perpendicular to the printed circuit board (340), (Fig 6);
arranging an upper layer of thermal interface material (392) on the top surface of the integrated heat spreader (391), (Fig 6), wherein a layer thickness of the upper layer (392) is selected based on the determined distance (distance space between 611 and 391 accommodating 392), (Fig 6); and
arranging a heat sink (611) with a contact surface such that the contact surface contacts the upper layer (392), (Fig 6).
Claim Rejections - 35 USC § 103
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 of this title, 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 2 is rejected under 35 U.S.C. § 103 as being unpatentable over Yoon.
Regarding Claim 2, Yoon discloses the limitations of Claim 1, however Yoon does not disclose repeating the method of claim 1 to manufacture each of the multiple electronic control units, wherein a same thickness is used for the respective integrated heat spreader of each of the multiple electronic control units.
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to repeat the method of claim 1 to manufacture each of the multiple electronic control units, and same thickness being used for the respective integrated heat spreader of each of the multiple electronic control units, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8, See: MPEP 214404 section VI.
Claims 3-5 are rejected under 35 U.S.C. § 103 as being unpatentable over Yoon in view of Conner et al (US 2006/0285297).
Regarding Claim 3, Yoon discloses the limitations of Claim 1, however where Yoon (In Figs 6-7) further discloses wherein the method further comprising: attaching a housing (612/631/394) on the printed circuit board (340), (Fig 6), however Yoon does not disclose wherein the housing includes a through hole that is configured to receive the integrated heat spreader at least partially.
Instead, Conner (In Fig 3) teaches wherein the housing (housing of 38), (Fig 3) includes a through hole (40) that is configured to receive the integrated heat spreader (50) at least partially (Fig 3).
It would have been obvious at the time the invention was filed to modify Yoon with Conner with the housing includes a through hole that being configured to receive the integrated heat spreader at least partially to benefit from providing a more compact and lower cost heat sink assembly effectively cool power stacked IC components (Conner ¶ 5, II. 6-8, ¶ 15 II. 1-2).
Regarding Claim 4, Yoon in view of Conner discloses the limitations of Claim 3, however where Yoon as modified does not disclose wherein attaching the housing is performed prior to arranging the integrated heat spreader on top of the lower layer.
Instead Conner (In Fig 3) further teaches wherein attaching the housing (housing of 38) is performed prior to arranging the integrated heat spreader (50) on top of the lower layer (88), (Fig 3).
It would have been obvious at the time the invention was filed to modify Yoon with Conner with attaching the housing being performed prior to arranging the integrated heat spreader on top of the lower layer to benefit from providing a more compact and lower cost heat sink assembly effectively cool power stacked IC components (Conner ¶ 5, II. 6-8, ¶ 15 II. 1-2).
Regarding Claim 5, Yoon in view of Conner discloses the limitations of Claim 3, however Yoon (In Fig 6-7) further discloses wherein determining the distance of the top surface of the integrated heat spreader (391) relative to the printed circuit board (340) includes measuring a height difference between a top surface of the housing (612) and the top surface of the integrated heat spreader (391), (Fig 6).
Claim 6 is rejected under 35 U.S.C. § 103 as being unpatentable over Yoon in view of Strader et al (US 2016/0315030).
Regarding Claim 6, Yoon in view of Conner discloses the limitations of Claim 1, however Yoon does not disclose wherein the upper layer includes at least one of: a thermally conductive compressible material; or a compressible material with a thermally conductive wrapping layer.
Instead, Strader (In Fig 1) teaches wherein the upper layer (116) includes at least one of: a thermally conductive compressible material (¶ 32, II. 1-7); or a compressible material with a thermally conductive wrapping layer.
It would have been obvious at the time the invention was filed to modify Yoon with Strader with the upper layer including at least one of: a thermally conductive compressible material to benefit from establishing a thermal joint between the heat spreader and the heat sink from heat source to the heat sink effectively transferring heat from heat generating component to the heat sink (Strader ¶ 42, II. 1-14).
Claims 7-8 are rejected under 35 U.S.C. § 103 as being unpatentable over Yoon in view of Strader and further in view of Liu et al (US 2022/0238412).
Regarding Claim 7, Yoon in view of Strader discloses the limitations of Claim 6, however Yoon as modified does not disclose wherein: the upper layer includes the compressible material with the wrapping layer; and the wrapping layer includes a graphite layer.
Instead Liu (In Figs 1 and 15) teaches wherein: the upper layer (1/2) includes the compressible material (2, foam, ¶ 43, II. 1-10) with the wrapping layer (1); and the wrapping layer includes a graphite layer (¶ 44, II. 1-12).
It would have been obvious at the time the invention was filed to modify Yoon with Strader and further with Liu with the upper layer including the compressible material with the wrapping layer; and the wrapping layer includes a graphite layer to benefit from providing thermal convection and heat transfer flow to an outer layer that dissipates the heat to an open area or through a heat sink or radiator preventing device to reduce its power draw and/or reduce its clock speed or worse shutting down time sensitive applications (Liu ¶ 4, II. 1-10, ¶ 25, II. 1-13).
Regarding Claim 8, Yoon in view of Strader and further in view of Liu discloses the limitations of Claim 7, however Yoon as modified does not disclose wherein the graphite layer has a thickness in a range from 10 µm to 40 ↨µm.
Instead, Liu (In Figs 1 and 15) further teaches wherein the graphite layer has a thickness in a range from 10 µm to 40 µm (¶ 47, II. 2-4).
It would have been obvious at the time the invention was filed to modify Yoon with Strader and further with Liu with the graphite layer having a thickness in a range from 10 µm to 40 ↨µm to benefit from providing thermal convection and heat transfer flow to an outer layer that dissipates the heat to an open area or through a heat sink or radiator preventing device to reduce its power draw and/or reduce its clock speed or worse shutting down time sensitive applications (Liu ¶ 4, II. 1-10, ¶ 25, II. 1-13).
Claim 9 is rejected under 35 U.S.C. § 103 as being unpatentable over Yoon in view of Koyano et al (US 2019/0390926).
Regarding Claim 9, Yoon discloses the limitations of Claim 1, however Yoon does not disclose wherein the layer thickness of the upper layer is in a range from 0.1 mm to 10 mm.
Instead Koyano (In Fig 3B) teaches wherein the layer thickness of the upper layer is in a range from 0.1 mm to 10 mm (¶ 52, II. 1-2), (Fig 3B).
It would have been obvious at the time the invention was filed to modify Yoon with Koyano with the layer thickness of the upper layer being in a range from 0.1 mm to 10 mm to benefit from maintaining strength of graphite sheet while improving heat dissipation (Koyano ¶ 52, II. 1-14).
Examiner Note; it has been held that changes in size are obvious (In Gardnerv.TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 111 (Fed. Cir. 1984)).
Koyano [0052] established graphite thickness being result-effective variable depending on desired graphite layer strength and thermal conductivity and cost.
Regarding Claim 10, Yoon discloses the limitations of Claim 1, however Yoon does not disclose wherein a ratio of the layer thickness of the upper layer to a layer thickness of the lower layer is in a range from 1 to 60.
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide a ratio of the layer thickness of the upper layer to a layer thickness of the lower layer is in a range from 1 to 60, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller 105 USPQ 233 (CCPA 1955).
It has also been held that discovering an optimum value of a result-effective variable (e.g., the thickness of an immersive solder/encapsulating coating for effective sealing/insulating) involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure; Electronic Device Comprising Heat emission structure US 2024/0114662, Multilayer Polymer-Solder Hybrid Thermal Interface Material for Integrated Heat Spreader and Method of Making Same US 2004/0262372, High Performance Dual in Line Memory US 2019/0241435, Electronic Device Including Heat Dissipation Structure US 2021/0068244. Other pertinent art made of record are on form PTO-892 notice of reference cited.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMIR JALALI whose telephone number is (303)297-4308. The examiner can normally be reached on Monday - Friday 8:30am - 5:00pm, Mountain Time. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jayprakash Gandhi can be reached on 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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/AMIR A JALALI/Primary Examiner, Art Unit 2835