Detailed Action1
Election/Restriction
Claim 20 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected groups and species, there being no allowable generic or linking claim.
Applicant's election without traverse of Group I, claims 1-19, in the reply filed on June 24, 2026 is acknowledged.
America Invents Act Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 USC 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis 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.
Claim Objections
Claims 8 and 17 are objected to because of an informality: the word “of” should be inserted between “inside” and “the” in the phrase “an inside the container” in the last line of the claims. Appropriate correction is required.
Rejections under 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-6 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP-04372159-A (“JP159”).
Regarding claim 1, JP159 teaches a cooling method (¶ [0001]-[0002], wherein all references to the JP159 specification refer to the machine translation submitted herewith), comprising: placing a container (11) having thermal conductivity in a cooling tank (10) configured to accommodate liquid refrigerant (18) (fig. 1, ¶ [0021]-[0022] & [0026]); accommodating an electronic device (12/13) to be cooled in the container (figs. 1a & 1b, ¶ [0027]); and immersion cooling the container using the liquid refrigerant in a state where the electronic device remains separate from the liquid refrigerant (fig. 1b, ¶ [0012] & [0022]).
Regarding claim 2, JP159 further teaches the container includes a sleeve that is flexible (¶ [0011], [0022] & [0026]).
Regarding claim 3, JP159 further teaches the electronic device includes a substrate (12) and a component (13) attached to the substrate (fig. 1, ¶ [0021]), and at least a part of the sleeve is deformed to follow an outer shape of the electronic device, and is connected to the component either directly or with a heat conductive member interposed between the sleeve and the component (fig. 1b, ¶ [0011]-[0013], [0021] & [0023]).
Regarding claim 4, JP159 further teaches deforming at least a part of the sleeve to follow an outer shape of the electronic device by sucking air in the sleeve using an air adjuster after the accommodating the electronic device in the container (fig. 1b, ¶ [0011]-[0013], [0021] & [0023]).
Regarding claim 5, JP159 further teaches the sleeve includes a thermally conductive film (fig. 1, ¶ [0021] & [0026]).
Claim 6 recites the placing the container in the cooling tank is performed before the accommodating the electronic device in the container. As illustrated in figs. 1a & 1b, the containers 11a/b are in the tank 10 prior to placing the electronic components 12/13 in the container.
Regarding claim 11, Ichinose further teaches the immersion cooling is one of single-phase immersion cooling and multiphase immersion cooling (fig. 1, ¶ [0029], i.e. multiphase).
Claim 1-5, 7, and 9-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by USPGPub 2017/0265336 (“Ichinose”).
Regarding claim 1, Ichinose teaches a cooling method (¶ [0002]), comprising: placing a container (27) having thermal conductivity in a cooling tank (11) configured to accommodate liquid refrigerant (12) (fig. 1, ¶ [0027]-[0029], wherein since the liquid refrigerant is configured to cool the electronic component within container 27, one of skill in the art will reasonably infer the container 27 has at least some thermal conductivity; ¶ [0050] also states that heat generated by the electronic component is quickly moved to refrigerant); accommodating an electronic device (17/18) to be cooled in the container (¶ [0034]-[0042]); and immersion cooling the container using the liquid refrigerant in a state where the electronic device remains separate from the liquid refrigerant (fig. 1, ¶ [0036], [0041], [0048] & [0050]).
Claim 2 recites the container includes a sleeve that is flexible. Since the sleeve is formed of resin and configured to move in close contact with electronic component when decompressed, one of skill in the art will reasonably infer the sleeve is flexible (figs. 6A-6B, ¶ [0037] & [0040]-[0041]).
Regarding claim 3, Ichinose further teaches the electronic device includes a substrate (21) and a component (17) attached to the substrate (fig. 2-5, ¶ [0031]-[0032]), and at least a part of the sleeve is deformed to follow an outer shape of the electronic device, and is connected to the component either directly or with a heat conductive member interposed between the sleeve and the component (fig. 6B, ¶ [0036], [0040]-[0041] & [0050]).
Regarding claim 4, Ichinose further teaches deforming at least a part of the sleeve to follow an outer shape of the electronic device by sucking air in the sleeve using an air adjuster after the accommodating the electronic device in the container (fig. 6A-6B, ¶ [0036], [0040]-[0041] & [0050]).
Claim 5 recites the sleeve includes a thermally conductive film. Since the sleeve is a relatively thin flexible material (figs. 6A-6B, ¶ [0037] & [0040]-[0041]), it reads on “film”. Further, since the liquid refrigerant is configured to cool the electronic component within sleeve 27, one of skill in the art will reasonably infer the sleeve 27 has at least some thermal conductivity. ¶ [0050] also states that heat generated by the electronic component is quickly moved to refrigerant—thus, the sleeve must allow heat to transfer therethrough.
Claim 7 recites the placing the container in the cooling tank is performed after the accommodating the electronic device in the container. Since each side of the container is heat welded after accommodating the electronic component, one of skill in the art will reasonably infer this happens prior to placing the container in the tank (figs. 6A & 6B, ¶ [0039]-[0042]). This is also suggested by the method of replacing an electronic component (see figs. 7-8, ¶ [0047]). Thus, one of skill in the art would reasonably infer the electronic component is sealed in the container before the container is placed in the cooling tank.
Claim 9 recites the immersion cooling is performed by regulating a position of a lower end of the container in the cooling tank. Since the lower end of the container is welded to card 18 (figs. 5-6, ¶ [0035]-[0036]), and card 18 is connected to a circuit board 16 on the bottom of the cooling tank (figs. 1 & 8, ¶ [0029]), the card 18 (and thus bottom of the container) is controlled/regulated by being attached to the circuit board 16.
Regarding claim 10, Ichinose further teaches the electronic device includes a semiconductor storage device (¶ [0053], wherein a solid state drive is a semiconductor storage device).
Regarding claim 11, Ichinose further teaches the immersion cooling is one of single-phase immersion cooling and multiphase immersion cooling (fig. 1, ¶ [0028], i.e. single-phase).
Rejections under 35 USC 1032
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 obvious3 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 12-14, 16, and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Ichinose in view of USPGPub No. 2018/0084670 (“Hirai”).
Regarding claim 12, Ichinose teaches an electronic device manufacturing method, comprising: placing a container (27) having thermal conductivity in a cooling tank (11) configured to accommodate liquid refrigerant (12) (fig. 1, ¶ [0027]-[0029], wherein since the liquid refrigerant is configured to cool the electronic component within container 27, one of skill in the art will reasonably infer the container 27 has at least some thermal conductivity; ¶ [0050] also states that heat generated by the electronic component is quickly moved to refrigerant); accommodating an electronic device (17/18) in the container (¶ [0034]-[0042]).
Claim 12 further recites the electronic device being configured to be connected to a test device. Any device that allows an electronic device to operate can be interpreted as the claimed “test device” since supplying power, instructions, data to be stored or transmitted, etc. to the electronic device tests whether the electronic device works and functions as intended. For example, pressing a power button on a computer can be interpreted as a test to see if the computer turns on. One of skill in the art appreciates that, given Ichinose teaches hard disks or solid state drives for use in a data center, these electronic components are electrically connected to an external device that sends and/or receives data from the electronic components, wherein the electronic components are configured to receive, store, and transmit data. This external device is interpreted as the “test device” since every time is sends or receives data from the electronic component it is testing whether the electronic component can receive, store, or transmit data. Furthermore, Ichinose teaches testing the cooling performance by allowing the electronic components to consume power while being immersion cooled (¶ [0051]). One of skill in the art appreciates that the electronic components are in communication with a device that supplies the power and tasks to the electronic components both during the “testing” as described in ¶ [0051] and during normal operation. Thus, this device can be interpreted as the “test device”.
Given the device being interpreted as a test device, Ichinose teaches testing the electronic device connected to the test device while immersion cooling the container using the liquid refrigerant in a state where the electronic device remains separate from the liquid refrigerant (¶ [0003], [0036], [0041], [0048] & [0050]-[0051]).
Ichinose fails to explicitly teach the electronic device connected to the test device via a cable. However, this would have been obvious in view of Hirai.
Hirai is also directed to immersion cooling electronic components (fig. 1, ¶ [0035] & [0042]). The electronic components include a circuit board and electronic components thereon (¶ [0043]). The circuit board is connected to an external device via a cable 34 that partly extends in the fluorocarbon-based coolant (fig. 1, ¶ [0037] & [0043]).
In this case, each of Ichinose and Hirai are directed to immersion cooling electronic components in a fluorine-based liquid. While one of skill in the art would reasonably infer the circuit board 16 of Ichinose is electrically connected to an external power source/device (as detailed above), Ichinose is silent as to how this is achieved. Hirai teaches one of skill in the art that it is known to extend cables from a circuit board within the coolant of an immersion cooling tank to an outside of the tank. Thus, it would be obvious and predictable to modify Ichinose to connect the circuit board (and thus the electronic components) to the external device via a cable in order to supply power and transmit/receive data to/from the electronic devices.
Claim 13 recites the container includes a sleeve that is flexible. Since the sleeve is formed of resin and configured to move in close contact with electronic component when decompressed, one of skill in the art will reasonably infer the sleeve is flexible (figs. 6A-6B, ¶ [0037] & [0040]-[0041]).
Regarding claim 14, Ichinose further teaches the electronic device includes a substrate (21) and a component (17) attached to the substrate (fig. 2-5, ¶ [0031]-[0032]), and at least a part of the sleeve is deformed to follow an outer shape of the electronic device, and is connected to the component either directly or with a heat conductive member interposed between the sleeve and the component (fig. 6B, ¶ [0036], [0040]-[0041] & [0050]).
Claim 16 recites the placing the container in the cooling tank is performed after the accommodating the electronic device in the container. Since each side of the container is heat welded after accommodating the electronic component, one of skill in the art will reasonably infer this happens prior to placing the container in the tank (figs. 6A & 6B, ¶ [0039]-[0042]). This is also suggested by the method of replacing an electronic component (see figs. 7-8, ¶ [0047]). Thus, one of skill in the art would reasonably infer the electronic component is sealed in the container before the container is placed in the cooling tank.
In the alternative, selection of any order of steps is prima facie obvious (see MPEP 2144.04(IV)(C)). Thus, changing the order of steps so the electronic device is accommodated in the container prior to placing the container in the cooling tank is prima facie obvious since the end result will be the exact same (i.e. the container within the tank and encapsulating the electronic component).
Claim 18 recites the immersion cooling is performed by regulating a position of a lower end of the container in the cooling tank. Since the lower end of the container is welded to card 18 (figs. 5-6, ¶ [0035]-[0036]), and card 18 is connected to a circuit board 16 on the bottom of the cooling tank (figs. 1 & 8, ¶ [0029]), the card 18 (and thus bottom of the container) is controlled/regulated by being attached to the circuit board 16.
Regarding claim 19, Ichinose further teaches the electronic device includes a semiconductor storage device (¶ [0053], wherein a solid state drive is a semiconductor storage device).
Claims 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over JP159 in view of USPGPub No. 2020/0084914 (“Kumagai”).
Regarding claim 12, JP159 teaches an electronic device manufacturing method (¶ [0001]-[0002]), comprising: placing a container (11) having thermal conductivity in a cooling tank (10) configured to accommodate liquid refrigerant (18) (fig. 1, ¶ [0021]-[0022] & [0025]); accommodating an electronic device (12/13) in the container (figs. 1a & 1b, ¶ [0027]).
Claim 12 further recites the electronic device being configured to be connected to a test device. JP159 teaches connecting the electronic device to a device via an external lead, wherein the device supplies power, signals, and operates the electronic component (¶ [0007], [0021] & [0029]). Any device that allows an electronic device to operate can be interpreted as the claimed “test device” since supplying power, instructions, data to be stored or transmitted, etc. to the electronic device tests whether the electronic device works and functions as intended. For example, pressing a power button on a computer can be interpreted as a test to see if the computer turns on.
Given the external device being interpreted as a test device, JP159 teaches testing the electronic device connected to the test device while immersion cooling the container using the liquid refrigerant in a state where the electronic device remains separate from the liquid refrigerant (figs. 1b, ¶ [0021]-[0022] & [0028]-[0029]).
JP159 fails to explicitly teach the electronic device connected to the test device via a cable. However, this would have been obvious in view of Kumagai.
Kumagai is directed to an immersion cooling system for solid state drives (fig. 2, ¶ [0015]). The electronic components are connected to an external device 5 via a cable 42 extending between the components 10 and the motherboard/device 5 (fig. 2, ¶ [0049]).
In this case, JP159 teaches the electronic device in the immersion cooling tank being connected to an external device via an external lead, but is silent as to what the external lead is. Kumagai teaches that it is known to connect electronic devices within an immersion cooling tank to external devices via cables. Thus, it would be obvious and predictable to connect the electronic components of JP159 to an external device/motherboard via a cable.
Regarding claim 13, JP159 further teaches the container includes a sleeve that is flexible (¶ [0011], [0022] & [0026]).
Regarding claim 14, JP159 further teaches the electronic device includes a substrate (12) and a component (13) attached to the substrate (fig. 1, ¶ [0021]), and at least a part of the sleeve is deformed to follow an outer shape of the electronic device, and is connected to the component either directly or with a heat conductive member interposed between the sleeve and the component (fig. 1b, ¶ [0011]-[0013], [0021] & [0023]).
Claim 15 recites the placing the container in the cooling tank is performed before the accommodating the electronic device in the container. As illustrated in figs. 1a & 1b, the containers 11a/b are in the tank 10 prior to placing the electronic components 12/13 in the container.
Claims 8 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over JP159 as applied to claim 1, and over JP159 et al. as applied to claim 12, and further in view of Ichinose.
Regarding claim 8, JP159 further teaches the container includes an opening (17) (fig. 1, ¶ [0021]), the immersion cooling is performed with at least a part of the opening being closed (fig. 1b, ¶ [0021], i.e. closed by lids 14). JP159 fails to teach explicitly teach the cooling method further comprises opening the opening after the immersion cooling and removing the electronic device from an inside the container. However, this would have been obvious in view of Ichinose.
Ichinose is also directed to an immersion cooling system for electronic components (see 102 rejections above). Ichinose teaches that it is known to remove and replace electronic components within the immersion cooling tank (see figs. 7-8, ¶ [0047]).
In this case, each of JP159 and Ichinose are directed to an immersion cooling system for electronic components. Ichinose teaches that defective and failed components have to be removed from the tank and replaced. Thus, in order to allow the system of JP159 to function as intended, it would be obvious to remove defective or failed electronic components from the tank.
Given the above modification, it would be obvious to remove the electronic components of JP159 by reversing the process for inserting the components, i.e. by removing the lid to remove the components (see figs. 1a & 1b, ¶ [0021] of JP159).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kyle Cook whose telephone number is 571-272-2281. The examiner’s fax number is 571-273-3545. The examiner can normally be reached on Monday-Friday 9AM-5PM EST.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner's supervisor Thomas Hong (571-272-0993). The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYLE A COOK/Primary Examiner, Art Unit 3726
1 The following conventions are used in this office action. All direct quotations from claims are presented in italics. All information within non-italicized parentheses and presented with claim language are from or refer to the cited prior art reference unless explicitly stated otherwise.
2 In 103 rejections, when the primary reference is followed by “et al.”, “et al.” refers to the secondary references. For example, if Jones was modified by Smith and Johnson, subsequent recitations of “Jones et al.” mean “Jones in view of Smith and Johnson”.
3 Hereafter all uses of the word “obvious” should be construed to mean “obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.”
Prosecution Insights