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 .
Claim Interpretation
The Examiner notes that Applicant has set forth a number of terms and definitions in paragraphs [0051]-[0063] of the filed Specification. The Examiner has, for the purpose of examination, interpreted each of the noted terminology in paragraphs [0051]-[0063] consistent with Applicant’s definitions set forth therein.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters "2000" and "1400" have both been used to designate cooling tip in paragraph [0208].
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description:
In paragraph [0212], reference characters 1220 and 1300 are specifically mentioned with respect to figure 5, but the figure fails to provide for such a reference numeral.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, for failing to comply with the enablement requirement.
Regarding claims 1 and 17, each claim recites therein “at least one elastic member comprising a first end configured to be connected to the main body and a second end configured to be connected to the cooling body” therein, and with each further reciting additional function features of “the elastic member” in the remainder of each claim. The Examiner has reviewed in the instant disclosure and while the disclosure may be enabling for the number of elastic members to be two, the disclosure fails to be enabling for the number of elastic members to be either one elastic member or more than two elastic members as contemplated by the full scope of the language of “at least one elastic member”. Accordingly, the specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims.
The Examiner first notes that the filed Specification only sets forth the language of “at least one elastic member” twice therein at paragraphs [0042] and [0072]. The Specification, in each of these instances, only substantially reiterates the at-issue language as set forth in claim 1 and fails to provide additional insight as to the upper and lower bounds of the number of elastic members contemplated to be used in the instant invention.
Turning to the language of “elastic member”, the Examiner notes that this terminology is used in multiple contexts throughout the Specification. The Specification, most relevant to the instant issue, introduces “an elastic member” as reference numeral 1300 in paragraph [0142] with respect to figure 2. Looking to figure 2, this figure is a box diagram of the instant invention that depicts the elastic member 1300 as a rectangle with interconnections to the base 1210, the fan 1500, and the heat dissipation member 1140 of the cooling module 1100. Similar discussion as in [0142] is present in at least paragraphs [0159], [0162] and [0164]-[0166]. Nothing, in any of these highlighted paragraphs nor in figure 2, provides for any manner of structural insight that contemplates a specific number of elastic members, let alone to provide for written direction or a working example of the full scope of the at-issue recitation of “at least one elastic member”.
The Examiner is of the position that the best description of the scope of what is encompassed by the recitation of “at least one elastic member” can be found in paragraphs [0240], [0266] and [0267]. Therein, it can be found that the reference number 1300 appears to be a generic, parent descriptor for additional structure formed by the first elastic member 1310 and the second elastic member 1320. This is arrangement is depicted in figures 6 and 10. The Examiner finds that the Specification and Drawings reasonably provide direction and a working example where the number of elastic members is equal to two. This, again, is supported by the particular disclosure associated with the structural and functional arrangements associated with the embodiment in figures 6 and 10.
For the sake of completeness, the Examiner notes that the filed Specification provides various non-limiting statements regarding the nature of the elastic member 1300. Paragraph [0264] sets forth that “the majority of the description features a case in which the elastic member (1300) comprises a tension spring and is mounted symmetrically with respect to the central axis (CA), but the technical idea of the present invention is not limited thereto, and a case in which one or more objects using restoring force such as compression springs and torsion spring are mounted may be applied in a similar manner.” Similarly, paragraph [0279] discloses “[t]he elastic member (1300) may provide elastic force in both directions.in order to protect the cooling module (1100) from external impact, For example, the elastic member (1300) may include a compressible tension spring or a tensionable compression spring. Specifically, when an impact is applied to the cooling device (1000) in the direction of the central axis (CA), the elastic member (1300) may be contracted or stretched to relieve the impact.”
The Examiner, however, fails to find that either of the generic, non-limiting disclosures in either of [0264] or [0279] provide for any manner of written direction or working example of the claimed cooling device that would enable the full scope of the claim as required by the at-issue recitation of “at least one elastic member”. This is exacerbated when taken in view of the balance of the disclosure that only provides a single, integrated working example of the cooling device with such requiring a first elastic member 1310 and a second elastic member 1320.
The Examiner further fails to find that the modifying of the number and/or type of elastic members would be a simple matter to one of ordinary skill in the art that would not require undue experimentation when the remaining structures, their respective structural relationships, and their related functionality at the distal end of the cooling device are highly dependent one on another. Said differently, the Examiner does not find that the disclosure simply enables one of ordinary skill in the art to add and/or remove the number of elastic members without substantially affecting most, if not all, of the surrounding structure so as to maintain the disclosed functionality of each respective structure.
As such, it is for at least the reasoning set forth above that the Examiner finds that the instant disclosure does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims without undue experimentation. Claims 2-16 are rejected due to their dependency on claim 1. Appropriate correction is required.
Claim 17 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Regarding claim 17, the claim currently recites “at least one elastic member … wherein, in response to the cooling tip being mounted on the main body in a first direction such that the cooling tip presses the cooling module in the first direction, the cooling module is configured to move from a first position to a second position as the elastic member stretches”. The claim further recites that “in response to the contracted elastic member being stretched, the cooling module is configured to move from the second position to the first position such that the cooling tip is separated from the main body in a second direction opposite to the first direction”.
The Examiner is of the position that the above cited portions of claim 17 including those highlighted sections define a structural and functional relationship of the at least one elastic member, the cooling module, the cooling tip and the main body that was not described in the Specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Specifically, claim 17 appears to define the stretching of the elastic member to be associated with two contradictory movements of the cooling module, with the filed Specification failing to provide any direction or working examples of an elastic member that can provide these contradictory movements without undue experimentation.
Said differently, the Examiner has reviewed the disclosure to find any direction or working example of a structural and functional arrangement of a cooling module that specifically is configured to move from a first portion to a second position as the elastic member stretches when moving in the first direction while also being configured to move from the second position to the first position as the contracted elastic member is stretched, and with such being in a second direction opposite to the first direction.
Turning to the instant disclosure, figure 10 and paragraphs [0265]-[0267] most relevantly describe the stretching of an elastic member. Paragraph [0265] sets forth that the elastic member 1300 “may be stretched or contracted as the cooling tip (2000) is mounted on or detached from the cooling device (1000)”. Paragraph [0266], with respect to figure 10, described for the inclusion of two elastic members in the form of first elastic member 1310 and second elastic member 1320. Each of 1310 and 1320 are configured to be stretched as the cooling tip 2000 is mounted on the cooling device 1000 “in the first direction along the central axis (CA). Paragraph [0267] continues with its description that “when the coupling member (1220) is detached from the cooling tip (2000), the first elastic member (1310) and the second elastic member (1320) may contract” with such a contraction of the stretched spring resulting in the cooling module to move in the second direction such that the cooling tip (2000) is detached from the device.
Neither this, however, nor any of the depiction in any of the figures including figures 6 and 10, provide any manner of direction nor working example of a cooling device with a cooling module, a cooling tip and at least one elastic member where the stretching of the elastic member provides for cooling module to move in both the first direction as well as the second, opposite direction. Rather, disclosure such as [0072] describes that the stretching of the elastic member provides for the cooling member to move from the first position to the second position in the first direction, and the subsequent contraction of the elastic member provides for the movement in the second, opposite direction.
For the sake of completeness, the Examiner notes that [0265] discusses that the elastic member “may be stretched of contracted as the cooling tip (2000) is mounted on or detached from the cooling device (1000).” While this provides for options for the action of the elastic member 1300, it still defines that the movement in the opposing first and second directions is due to opposite movements of the elastic member, and not from the elastic member only providing stretching, or only providing contracting to accomplish the movement in both the first and second direction. Similarly, while [0279] sets forth “a compressible tension spring or a tensionable compression spring” there is nothing in this paragraph that provides direction or a working example of the stretching of the elastic member to provide for the movement in both the first direction as well as the second, opposite direction.
Thus, it is for at least the reasoning set forth above that the Examiner finds that claim 17 contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Appropriate correction is required.
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 1-17 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 “at least one elastic member” in line 9 of the claim, and then further specifies “the elastic member” in each of lines 14 and 16 of the claim. The Examiner is of the position that these noted recitations constitute a broad limitation together with a narrow limitation that falls within the broad limitation in the same claim. It is well established that such recitations may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Said differently, the Examiner is of the position that the scope of claim 1 is indefinite given that it is unclear if the claim is intended to cover the full scope of “at least one elastic member” or if the claim (and the subsequent dependent claims) are limited to a single elastic member as implied by the recitation of “the elastic member”. The Examiner respectively suggests that Applicant maintain consistent naming conventions throughout independent claim 1 as well as respective dependent claims 2-16 in order to avoid such indefiniteness in the scope of the claims. Language to the effect of “at least one elastic member” and “the at least one elastic member” would appear to be effective in clarifying the above-noted issue with the scope of the claim. Claims 2-16 are rejected due to their respective dependency on claim 1. Appropriate correction is required.
Regarding claims 2, 5, 6 and 16, each respective claim is further rejected for substantially the same reasoning as set forth with respect to claim 1 above and the recitation of “the elastic member” therein. Appropriate correction is required.
Regarding claim 17, the claim recites “at least one elastic member” in line 9 of the claim, and then further specifies “the elastic member” in each of lines 14 and 16 of the claim. The Examiner is of the position that these noted recitations constitute a broad limitation together with a narrow limitation that falls within the broad limitation in the same claim. It is well established that such recitations may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 17 is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Said differently, the Examiner is of the position that the scope of claim 17 is indefinite given that it is unclear if the claim is intended to cover the full scope of “at least one elastic member” or if the claim is limited to a single elastic member as implied by the recitation of “the elastic member”. The Examiner respectively suggests that Applicant maintain consistent naming conventions throughout independent claim 17 to avoid such indefiniteness in the scope of the claim. Language to the effect of “at least one elastic member” and “the at least one elastic member” would appear to be effective in clarifying the above-noted issue with the scope of the claim. Appropriate correction is required.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Huffmaster et al. (US Pat. Pub. 2021/0121219 A1) provides for a cooling device with a removable cooling tip 210 (see figures 2J and 2K) and an elastic member 229. Huffmaster does not fairly describe various structural and functional features of either of claims 1 and 17 including the stretching of the spring with the associated movement of a cooling module in a first direction, and the movement of the cooling module in a second opposite direction when the spring contracts.
Kim (US Pat. Pub. 2019/0175394 A1) provides for a cooling device 10 with a removable cooling tip 20 as in [0128] and at least one elastic member (see, for example, figure 2C at 117or figure 2J at 117’). Kim does not fairly describe various structural and functional features of either of claims 1 and 17 including the stretching of the spring with the associated movement of a cooling module in a first direction, and the movement of the cooling module in a second opposite direction when the spring contracts.
Other relevant cooling devices with a tip and various internal structure include Besirli et al (US Pat. Pub. 2016/0279350 A1), Allison et al. (US Pat. No. 9,295,512 B2) and Damasco et al. (US Pat. No. 7,160,291 B2).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RONALD HUPCZEY, JR whose telephone number is (571)270-5534. The examiner can normally be reached Monday - Friday; 8 am - 4 pm.
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/Ronald Hupczey, Jr./Primary Examiner, Art Unit 3794
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