Prosecution Insights
Last updated: April 19, 2026
Application No. 18/569,200

SUBMODULE

Final Rejection §102§103
Filed
Dec 11, 2023
Examiner
SMITH, COURTNEY L
Art Unit
2835
Tech Center
2800 — Semiconductors & Electrical Systems
Assignee
Hyosung Heavy Industries Corporation
OA Round
2 (Final)
85%
Grant Probability
Favorable
3-4
OA Rounds
2y 6m
To Grant
97%
With Interview

Examiner Intelligence

Grants 85% — above average
85%
Career Allow Rate
1062 granted / 1244 resolved
+17.4% vs TC avg
Moderate +12% lift
Without
With
+11.7%
Interview Lift
resolved cases with interview
Typical timeline
2y 6m
Avg Prosecution
36 currently pending
Career history
1280
Total Applications
across all art units

Statute-Specific Performance

§103
39.1%
-0.9% vs TC avg
§102
33.9%
-6.1% vs TC avg
§112
24.4%
-15.6% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1244 resolved cases

Office Action

§102 §103
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 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(s) 1, is/are rejected under 35 U.S.C. 102(a1) as being anticipated by (Rai 2021/0112680). Regarding Claim 1; Rai discloses a submodule (as depicted by Fig.’s 3 and 6A) comprising: an enclosure in which parts are installed (whereas contactor 22 is defined by a housing-50 including a parts-56, 58), and an opening is formed on one outer surface thereof; and a heat sink installed in the opening of the enclosure, having an inner surface inside the enclosure on which at least one of the parts installed (as depicted by Fig. 6A--whereas a heat sink-28, 100 and/or 54 thereof disposed through an opening atop the enclosure-50 and in contact with part 56), and the other surface being outside the enclosure (as constituted by fins-92), wherein a first terminal for electrical connection with an adjacent submodule is installed on a front plate of the enclosure, and a second terminal is provided on the heat sink (whereas bus bar 64 couples to respective terminals 52 of respective contactors 22, wherein 52 extends through a front plate of the enclosure—as depicted by Fig. 4; NOTE: as argued below the first respective terminal 52 electrically connects the second contactor/adjacent module, and 28 and/or 100 of the heat sink is provided on the respective second terminal 52 of the first contactor, wherein 100 thermally interfaces the terminal and couples therewith via fasteners, as further depicted by Fig. 5). 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, 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(s) 2-3, and 5, is/are rejected under 35 U.S.C. 103 as being unpatentable over (Rai 2021/0112680). Regarding Claim 2; Rai discloses the submodule of claim 1, wherein the opening is formed in one of side plates of the enclosure suggested to install the heat sink (as depicted by Fig. 3, 4, or 6A—whereas the opening is defined in atop the enclosure through a top, side or front plate), except explicitly disclosing to install. However, ‘**install**’ constitutes a method of manufacture and is not structurally distinguished from the prior art. (In re Johnson, 157 USPQ 670, 1968; In re Thorpe, 227 USPQ 964, 1985; See MPEP 2113—Product by Process Claims). It would have been obvious to one having ordinary skill in the art at the time that the invention was made that the disclosed structure of the prior art is a fully functional equivalent to the claimed structure as evidenced by meeting all of the claimed structural limitations thereof. Regarding Claim 3; Rai discloses the submodule of claim 1, wherein the opening is formed on a top plate of the enclosure, suggested to install the heat sink (as depicted by Fig.’s 3, 4 or 6A), except explicitly disclosing to install. However, ‘**install**’ constitutes a method of manufacture and is not structurally distinguished from the prior art. (In re Johnson, 157 USPQ 670, 1968; In re Thorpe, 227 USPQ 964, 1985; See MPEP 2113—Product by Process Claims). It would have been obvious to one having ordinary skill in the art at the time that the invention was made that the disclosed structure of the prior art is a fully functional equivalent to the claimed structure as evidenced by meeting all of the claimed structural limitations thereof. Regarding Claim 5; Rai discloses the submodule of claim 1, wherein a flow path through which cooling fluid flows is formed inside the heat sink, wherein the flow path communicates with the outside through an inlet and an outlet installed at side(s) of the heat sink (whereas fluid conduit-84—para. 0030 comprises an inlet/outlet at respective ends and constitutes a flow path of the heat sink—as depicted by Fig. 3). Except, Rai does not explicitly disclose the inlet and outlet at one side. However, Chainer discloses an inlet and outlet at one side (as depicted by Fig. 15C), and thus it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the cold plate which defines the heat sink flow path as comprising the respective inlet and outlet at one side since it was known in the art that the inlet/outlets ports at a common side may characterize an optimized placement in accordance with a specific cooling application and/or so as to allow for quick repair and easily install and disconnect flow path tubing to/from cold plate and between other cooling system structures including pumps, tanks and heat dissipation means etc. Claim 8, is/are rejected under 35 U.S.C. 103 as being unpatentable over (Rai 2021/0112680) in view of (Chainer 9,414,523). Regarding Claim 8; Rai discloses a submodule (as depicted by Fig.’s 3, 4 or 6A) comprising: an enclosure having a hexahedral shape in which parts are installed therein (whereas contactor 22 is defined by a housing-50 including a parts-56, 58) and an opening is formed on one outer surface thereof; and a heat sink installed in the opening of the enclosure, having an inner surface inside the enclosure on which at least one of the parts is installed (as depicted by Fig. 6A--whereas a heat sink-28, 100 and/or 54 thereof disposed through an opening of atop the enclosure-50 and in contact with part 56), and forming an outer surface of one side of the enclosure (as constituted by an upper surface of cold plate-74 or via fins-92-Fig.’s 4 or 6A), wherein a flow path through which cooling fluid flows is formed inside the heat sink, and the flow path communicates with the outside through an inlet and an outlet installed at side(s) of the heat sink (whereas fluid conduit-84—para. 0030 comprises an inlet/outlet at respective ends and constitutes a flow path of the heat sink—as depicted by Fig. 3), and wherein a first terminal for electrical connection with an adjacent submodule is positioned on a front plate of the enclosure, and a second terminal for electrical connection with an adjacent submodule is positioned on the heat sink NOTE: as argued below the first respective terminal 52 electrically connects the second contactor/adjacent module, and 28 and/or 100 of the heat sink is provided on the respective second terminal 52 of the first contactor, wherein 100 thermally interfaces the terminal and couples therewith via fasteners, as further depicted by Fig. 5). Except, Rai does not explicitly disclose the inlet and outlet at one side. However, Chainer discloses an inlet and outlet at one side of a heat sink (as depicted by Fig. 15C—whereas inlet/outlet 1508/1509 is disposed at one side of heat sink 1510), and thus it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the cold plate which defines the heat sink flow path as comprising the respective inlet and outlet at one side since it was known in the art that the inlet/outlets ports at a common side may characterize an optimized placement in accordance with a specific cooling application and/or so as to allow for quick repair and easily install and disconnect flow path tubing to/from cold plate and between other cooling system structures including pumps, tanks and heat dissipation means etc. Allowable Subject Matter Claims 4 and 9, are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Regarding Claim 4 the submodule of claim 1, wherein the opening is formed on a bottom plate of the enclosure to install the heat sink. Regarding Claim 9; the already modified submodule of claim 8, wherein the opening is formed in any one of a top plate of the enclosure, and the heat sink is installed to cover the opening to form one outer surface of the enclosure. Response to Arguments Applicant's arguments filed 12/8/25 have been fully considered but they are not persuasive. Regarding Claim 1; the applicant argues on page(s) 9-10 that Rai does not disclose ‘a first terminal for electrical connection with an adjacent module is installed on a front plate of the enclosure, and a second terminal-52 is not provided on heat sink 90 or cooling member-28…but are simply located on the outer surface of the contactors 22 housing enabling electrical connection between 22 and adjacent busbar-64’. As an initial matter, that neither of assertions including “a first terminal for electrical connection” and “a second terminal is provided on the heat sink” presents direct contact or even a particular structural means of connectivity between the terminals and an adjacent module or heat sink, respectively and thus varying indirect mechanical, electrical and/or control therebetween may read on the claim, as asserted. The office otherwise notes that the applicant has failed to readily present a clear rationale as to why the first terminal is not electrically connected to an adjacent module; whereas the applicant admits on page 10 that the terminals-52 electrically connects adjacent contactor-22. The office herein notes that par. 0043 further discloses the electrical connection between a first terminal 52 and 22, and the first terminal 52 is not only located on the housing-50 of adjacent module-22, as depicted Fig.’s 3 or 4 but also comprises fasteners which atleast in-part extends through the first terminal, a front plate atop the housing of the module, and a bus bar 64. Further, the module-22 is disclosed to include the housing-50 and terminals, 52, 54, and actuator-58 therebetween, as set forth by para. 0028. Further, the applicant has failed to present a clear rationale as to why another terminal 52 is not provided on the heat sink of the submodule, and only notes on page 9 that the contactor is far away from the heat sink. It appears the applicant intends to suggest that ‘provided on’ as claimed and ‘far away’ as argued define a distinguishing attribute. However, the office otherwise contends that Fig.’s 3, 4, 5 and/or 6A each depicts the heat sink is defined by 28, and/or 100 is atleast indirectly provided on a second respective contactor-22. Going further, the first and second contactors provide power and/or dissipate heat-as set forth by para. 0009 and para. 0032-0033 further discloses the cooling member-29 and the contactors may connect by brackets-26, latching formations 102, 104 and/or potting material-100 defining a thermally conductive interface to facilitate heat transfer from the contactors, wherein it is herein noted that fasteners are depicted through the potting material-100 through the terminals 52, 54 of the front plate of the first and second contactors—defining the adjacent module. As such, Rai is hereby deemed to read on the broadest reasonable claim construction defined by claims 1 and 8. The rejected claim(s) are herein maintained. Although, it appears the applicant may overcome the prior art by asserting the front plate as a vertical with respect to the enclosure OR the front plate is perpendicular relative to the installed parts OR the front plate is perpendicular with respect to the other surface. Claims 4 and 9 are hereby deemed as allowable subject matter. Conclusion THIS ACTION IS MADE FINAL. 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 COURTNEY SMITH whose telephone number is (571)272-9094. The examiner can normally be reached M-F 9-5p. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jayprakash Gandhi can be reached at 571-272-3740. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /COURTNEY L SMITH/Primary Examiner, Art Unit 2835
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Prosecution Timeline

Dec 11, 2023
Application Filed
Sep 16, 2025
Non-Final Rejection — §102, §103
Dec 08, 2025
Response Filed
Mar 21, 2026
Final Rejection — §102, §103 (current)

Precedent Cases

Applications granted by this same examiner with similar technology

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2y 5m to grant Granted Mar 31, 2026
Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

3-4
Expected OA Rounds
85%
Grant Probability
97%
With Interview (+11.7%)
2y 6m
Median Time to Grant
Moderate
PTA Risk
Based on 1244 resolved cases by this examiner. Grant probability derived from career allow rate.

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