DETAILED ACTION
Applicant’s amendments and remarks, filed July 24, 2026, are fully acknowledged by the Examiner. Currently, claims 1-17 are pending with claims 1, 2, 5, 6 and 15-17 amended. Applicant’s amendments to paragraph [0208] of the Specification as well as the submission of the replacement Drawing sheet for figure 5 have obviated the previously-filed objections to the drawings. Applicant’s amendments to the claims have obviated the previously-filed rejections under 35 U.S.C. 112(b). The following is a complete response to the July 24, 2026 communication.
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.
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 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.
Response to Arguments
Applicant's arguments filed July 24, 2026 have been fully considered but they are not persuasive.
Applicant’s argues on pages 8-10 of the Remarks filed July 24, 2026 with respect to the prior rejection of claims 1-17 under 35 U.S.C. 112(a). Applicant contends therein that “the Specification reasonably enables the full scope of the recited ‘at least one elastic member.’”. Applicant reviews portions of the discloses and specifically notes that the Specification “consistently describes the elastic member as providing a restoring force that biases movement of the cooling module relative to the body” and further notes that “one end of the elastic member is connected to the body and the other end is connected to the cooling module, such that the cooling module may move relative to the body due to elasticity of the elastic member.” Applicant then further points to the disclosure in paragraphs [0240], [0261] and [0263]-[0265] in describing that the “cooling tip deforms the elastic member during mounting and that the cooling tip may subsequently be detached by … an elastic force of the elastic member.”
Applicant continues on pages 9-10 of the Remarks that that thrust of the disclosure reasonably describes that the disclosed force-restoring functionality set forth through “is not dependent on the precise number of elastic members employed, but rather on the ability of the elastic member(s) to provide the disclosed restoring force between the body and the cooling module”. Applicant then highlights on page 10 that the “fact that the illustrated embodiments utilizes first and second elastic members therefore reflects one exemplary implementation of the disclosed restoring-force arrangement, rather than a limitation on the scope of the invention” such that “the same disclosed restoring-force functionality may be achieved using a single elastic member, while additional elastic members may likewise be employed to provide the disclosed restoring-force functionality.” Applicant concludes on page 10, with respect to the enablement rejection, that “the Office Action does not identify any technological obstacle , critical parameter, unpredictable result, or undue experimentation that would be required to implement the disclosed restoring-force arrangement using one elastic member or more than two elastic members” and that such alternative arrangements represent “routine design choice that would have been well within the ordinary skill in the art in view of the teachings of the Specification.”
This is not persuasive.
While Applicant may desire to distill the disclosure in the instant Specification, including that of paragraphs [0240], [0261], [0263]-[0267] and [0279] to a simple matter than any number of elastic members (one, two, a plurality, etc.) can be provided in various forms including one or more torsion springs or compressions springs so long as such provide for the discussed restoring force between the body and the cooling tip, the Examiner fails to find that these arguments convincing so as to overcome the rejections of claims 1 and 17 under 35 U.S.C. 112(a) above.
The Examiner maintains the position set forth in the rejections of claims 1 and 17 under 35 U.S.C. 112(a) above that nothing in any of the above-highlighted paragraphs [0142], [0159], [0162] and [0164]-[0166] 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 further maintains 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]. Again, while Applicant’s disclosure may note that the reference number 1300 is directed to an elastic member, such is a generic, parent descriptor for the additional disclosed structure formed by the first elastic member 1310 and the second elastic member 1320. This arrangement has two elastic members in the form of 1310 and 1320 is depicted in figures 6 and 10.
Thus, the Examiner cannot find that these above-highlighted portions of the Specification and Drawings reasonably enable that any number of elastic members can be provided so long as such provide a restoring force between the body and the cooling tip. Rather, the Examiner maintains that the Specification and Drawings only 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.
The Examiner notes, with respect to Applicant’s arguing for the disclosure in paragraph [0264] of the filed Specification providing non-limiting disclosure with respect to the number and type of elastic members, the Examiner preliminary notes that this paragraph [0264] specifically 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 maintains that neither 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”. Applicant’s inconsistent description surrounding the elastic member 1300, elastic members 1310/1320 and inconsistent depiction of such structure and reference numerals in the Drawings provide unclear description as to the number of elastic member(s) contemplated to be used in the invention. Said differently, it appears to the Examiner that each recitation of an “elastic member 1300” is, again, a generic descriptor for the additional disclosed structure formed by the first elastic member 1310 and the second elastic member 1320 This is lack of consistent, clear description of the elastic member(s) and the associated structures for interconnection between the elastic member(s) and the associated structure (body, cooling tip, pins, etc.) is exacerbated when taken in view of the balance of the disclosure that only provides the single, integrated working example of the cooling device with such requiring a first elastic member 1310 and a second elastic member 1320.
The Examiner notes, in response to Applicant’s argument that the Office Action has failed to provide for any assessment of undue experimentation, the Examiner reiterates that the instant and prior rejections of claim 1 under 35 U.S.C. 112(a) has specifically set forth that undue experimentation would indeed be required in order to modify number and/or type of elastic member(s). The Examiner reiterates that undue experimentation would be required when the remaining structures of the device in addition to the elastic member(s), their respective structural relationships, and their related functionality at the distal end of the cooling device are highly dependent one on another for packaging of the device, relative movement of the cooling tip of the device, etc. Said differently, the Examiner does not find that the instant 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. The Examiner cannot find that the adding/removing of tensions springs, the replacement of the disclosed two tension springs (1310/1320) with an equal amount of vaguely described compression or torsion springs, nor the replacement of the disclosed two tension springs (1310/1320) with an unequal amount (one, three, etc.) of vaguely described compression or torsion springs would only require “routine design choice” in light of the instant disclosure of the Specification/Drawings as alleged by Applicant.
Therefore, it is for at least the reasoning set forth in the rejections and remarks above that the Examiner maintains that the rejection of claims 1-17 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 remains tenable.
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 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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