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
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) 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.
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) 1-5, 7, 11-12, 14, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Boli et al (CN 210865715U, herein referred to as Boli). Boli discloses a heat dissipation structure (Figs 1-6) configured to cool a cable (Paragraph 8) for usage with a high voltage wire harness of an electrical vehicle (Paragraph 9), while improving heat dissipation efficiency and uniformity of the insulating liquid flowing evenly through the upper or lower surface of the interior copper wire (Paragraph 14). Specifically, with respect to claim 1, Boli discloses a heat dissipation structure (Figs 5-6) comprising a cable jacket (11), having a fluid channel (14) extending along an axial direction of the cable jacket (11), an electrical conductor (12), disposed in the cable jacket (11) and a deformable component (13), capable of being temperature-adaptive (i.e. the component may be metal, Paragraph 30) and in a helical shape (Fig 6, Paragraph 33), wherein the deformable component (13) is disposed in the fluid channel (14), and the deformable component (13) is capable of allowing a two-phase flow and a vortex to be generated in a working fluid in the fluid channel (14, Paragraph 37). With respect to claim 2, Boli discloses that an axial direction of the deformable component (13) is substantially parallel to an axial direction of the cable jacket (11, Fig 6). With respect to claim 3, Boli discloses that the deformable component (13) and the cable jacket (11) are coaxially disposed (Fig 5). With respect to claim 4, Boli discloses that the electrical conductor (12) is in fluid communication with the fluid channel (14, Paragraph 37, Fig 5). With respect to claim 5, Boli discloses that the working fluid may non-conductive (Paragraph 14). With respect to claim 7, Boli discloses that the deformable component (13) comprises a plurality of turns connected to each another (Fig 6), and the deformable component (13) may have an adaptive deformation characteristic so that the vortex is generated in the working fluid by changing an axial distance between two adjacent ones of the plurality of turns (i.e. adjusting the winding pitch increases or decreases the distance between plurality of turns, Paragraph 37). With respect to claim 11, Boli discloses a cooling method configured to cool cable (Figs 5-6), comprising providing a working fluid into a fluid channel (14) of a cable jacket (11) and allowing a two-phase flow and a vortex to be generated in the working fluid by a deformable component (13) disposed in the fluid channel (14, Paragraph 37), wherein the deformable component (13) may be temperature-adaptive (i.e. the component may be metal, Paragraph 30) and in a helical shape (Fig 6, Paragraph 33). With respect to claim 12, Boli discloses a method, wherein the two-phase flow and the vortex may be simultaneously generated in the working fluid by the deformable component (13, Paragraph 37). With respect to claim 14, Boli discloses a method, wherein the deformable component (13) comprises a plurality of turns connected to each other (Fig 6) and has an adaptive deformation characteristic so that the vortex is generated in the working fluid by changing an axial distance between two adjacent ones of the plurality of turns (i.e. adjusting the winding pitch increases or decreases the distance between plurality of turns, Paragraph 37). With respect to claim 16, Boli discloses a method, wherein the working fluid is non-conductive (Paragraph 14).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) 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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 6, 8, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Boli (CN 210865715U). Boli discloses a heat dissipation structure (Figs 1-6) configured to cool a cable (Paragraph 8) for usage with a high voltage wire harness of an electrical vehicle (Paragraph 9), while improving heat dissipation efficiency and uniformity of the insulating liquid flowing evenly through the upper or lower surface of the interior copper wire (Paragraph 14), as disclosed with respect to claims 1 & 7 above.
However, Boli doesn’t necessarily disclose the deformable component allows the two-phase flow to be generated in the working fluid in a temperature ranging from 40°C to 90°C (claims 6 & 13), nor the deformable component has the adaptive deformation characteristic so that the axial distance between two adjacent ones of the plurality of turns is varied in a range from 0.5 mm to 20.0 mm (claim 8).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the heat dissipation structure of Boli to comprise the two-phase flow to be generated in the working fluid in a temperature ranging from 40°C to 90°C and the deformable component having the adaptive deformation characteristic so that the axial distance between two adjacent ones of the plurality of turns is varied in a range from 0.5 mm to 20.0 mm, 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.
Claim(s) 9-10 & 15 are rejected under 35 U.S.C. 103 as being unpatentable over Boli (CN 210865715U) in view of Dowell (Pub Num 2017/0158068). Boli discloses a heat dissipation structure (Figs 1-6) configured to cool a cable (Paragraph 8) for usage with a high voltage wire harness of an electrical vehicle (Paragraph 9), while improving heat dissipation efficiency and uniformity of the insulating liquid flowing evenly through the upper or lower surface of the interior copper wire (Paragraph 14), as disclosed with respect to claims 1 & 11 above.
While Boli discloses that the deformable component may be an electrical wire, Boli doesn’t necessarily disclose the deformable component comprises a shape-memory alloy (claim 9 & 15), nor the shape-memory alloy is selected from a group consisting of nickel-titanium alloy, manganese-silicon-iron alloy, zinc-copper-aluminum alloy, nickel-copper-aluminum alloy, nickel-titanium-iron alloy, and nickel-titanium-copper alloy (claim 10).
Dowell teaches a heat dissipation structure (Figs 1-8B) configured for usage with a high voltage wire harness of an electrical vehicle (Paragraph 1), wherein the cable may be stretched and suspended between the EV charging station and an access port of an electrical vehicle and recoiled for storage without damage to the cable to facilitate storage of the cable (Paragraph 61). Specifically, with respect to claims 9 & 15, Dowell teaches a heat dissipation structure (230, Figs 2-3) comprising a cable jacket (232), having a channel (located at 234) extending along an axial direction of the cable jacket (232), an electrical conductor (N, P, L, E), disposed in the cable jacket (232) and a deformable component (236), capable of being temperature-adaptive (i.e. SMA material, Paragraph 68) and in a helical shape (Fig 1B, Paragraph 20), wherein the deformable component (236) is disposed within the cable jacket (232) and comprises a shape-memory alloy (Paragraph 68).
It would have been obvious to one having ordinary skill in the art of cables at the time the invention was made to modify the heat dissipation structure of Boli to comprise the metallic deformable component to be a shape-memory alloy material configuration as taught by Dowell because Dowell teaches that such a configuration provides a heat dissipation structure (Figs 1-8B) configured for usage with a high voltage wire harness of an electrical vehicle (Paragraph 1), wherein the cable may be stretched and suspended between the EV charging station and an access port of an electrical vehicle and recoiled for storage without damage to the cable to facilitate storage of the cable (Paragraph 61).
With respect to claim 10, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the SMA wire of modified Boli to be made of nickel titanium alloy, such as well-known and commercially available Nitinol because of its durability, flexibility, and shape memory properties when heated (Examiner Takes Official Notice) and since it has been held to be within general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Response to Arguments
Applicant's arguments filed January 28, 2026 have been fully considered but they are not persuasive. Specifically, the applicant argues the following:
A) The winding member in Boli lacks temperature adaptivity and therefore cannot anticipate the claimed invention.
B) Boli also doesn’t disclose allowing a two phase flow and therefore cannot anticipate the claimed invention.
C) Combining Boli and Dowell would result in a loss of the original function which is the supporting function originally required by Boli and therefore there doesn’t exist a motivation to combine Boli and Dowell.
With respect to argument A, the examiner respectfully traverses. Boli teaches that the winding member may be made of metals such as copper, aluminum, etc. (Paragraphs 29-30), to increase the heat dissipation area of the liquid cooled cable, improve the heat dissipation efficiency and provide cable cooling uniformity for a high voltage wiring harness of electrical vehicles (Paragraphs 8-9), while also enhancing structural strength (Paragraph 29). Improving heat dissipation efficiency and providing cable cooling uniformity is done by adjusting the diameter and pitch of the winding body 13, so that the flow rate of coolant in the flow channel is adjusted to fully achieve the cooling effect (Paragraph 33). Clearly, adjusting the winding diameter and pitch requires the stretching of the winding to allow the flow channel 14 to become bigger so that flow rate of the coolant may be increased to enhance cooling. In order for the winding to be stretch, to cool the cable when needed, it has to be determined that the cable has reached a certain temperature threshold, whereby cooling of the cable is needed. While not specifically stating such, clearly the winding has to be heated to a certain temperature in order to stretch the winding thereby reducing its diameter in order to allow coolant to flow. Boli clearly teaches that by adjusting the pitch of the winding body, the coolant flow rate and structural strength of the cable can be changed, so that when the cable is cooled, the pitch of the winding decreases, thereby the space from which coolant flows decreases, therefore the coolant flow decreases, and the structural strength increases because the winding goes back to its original diameter which is larger than when it is heated (Paragraph 37). So, while the actual function of adjusting the diameter and pitch is not discussed in detail, clearly the winding of Boli has to have temperature adaptivity in order for its overall diameter and pitch to be altered during the usage of the high voltage cable.
In light of the above, the examiner respectfully submits that disclosure of Boli clearly indicates that the winding of Boli has temperature adaptivity.
With respect to argument B, the examiner respectfully traverses. The claimed limitations of “A heat dissipation…….allows a two phase flow…..” doesn’t add any claimed structural in the claim but rather functionality of the claimed structure. The courts have also been consistent that functional language doesn’t differentiate the claimed invention from the prior art, if all of the structural limitations of the claimed invention are disclosed in the prior art references. Specifically, the MPEP teaches:
2114 [R-1] Apparatus and Article Claims — Functional Language
For a discussion of case law which provides guidance in interpreting the functional
portion of means-plus-function limitations see MPEP § 2181 - § 2186.
APPARATUS CLAIMS MUST BE STRUCTURALLY DISTINGUISHABLE
FROM THE PRIOR ART
>While features of an apparatus may be recited either structurally or functionally, claims<
directed to >an< apparatus must be distinguished from the prior art in terms of structure
rather than function. >In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429,
1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to
function did not defeat the Board’s finding of anticipation of claimed apparatus because
the limitations at issue were found to be inherent in the prior art reference); see also In re
Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971);< In re
Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). “[A]pparatus claims
cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch &
Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis
in original).
Based on the above guidelines, the examiner respectfully submits, that all of the structural limitations of the claimed invention are disclosed in the prior art reference and therefore must be capable of performing the same functions and be utilized in the same manner. If some different structure is responsible for performing the function of the claimed invention, then the applicant has to claim the different structure to differentiate the claimed invention from the prior art. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
With respect to argument C, the examiner respectfully traverses. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Secondly, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Boli discloses that the deformable component may be an electrical wire, however, Boli doesn’t necessarily disclose the deformable component comprising a shape-memory alloy. Dowell was relied on by the examiner for its teaching of a deformable component (236), comprising a shape-memory alloy (Paragraph 68) and that such is known in the art to be utilized in the same environment of a high voltage cable for usage with an electrical vehicle. Based on the teaching of Dowell, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the wire of modified Boli to be made of nickel titanium alloy, such as well-known and commercially available Nitinol because of its durability, flexibility, and shape memory properties when heated (Examiner Takes Official Notice) and since it has been held to be within general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
In light of the comments above, the examiner respectfully submits that the 35 USC 103(a) rejection of claims 9-10 & 15 is proper and just.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please refer to the enclosed PTO-892 form for the citation of pertinent art in the present case, all of which disclose various heat dissipation structures.
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.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM H MAYO III whose telephone number is (571)272-1978. The examiner can normally be reached on M-Thurs (5:30a-3:00p) Fri 5:30a-2p (w/alternating Fridays off).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Imani Hayman can be reached on (571) 270-5528. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/William H. Mayo III/
William H. Mayo III
Primary Examiner
Art Unit 2847
WHM III
May 7, 2026
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