CTNF 18/598,009 CTNF 90500 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Information Disclosure Statement The information disclosure statements (IDS) submitted on 3/7/2024, 6/23/2025 are being considered by the examiner. Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15-aia AIA Claim(s) 1-9 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Cannizzaro et al (US 5,739,586 hereinafter Cannizzaro) . Regarding Claim 1, Cannizzaro discloses in Fig 3: An electronic device comprising: a device substrate (30) having a plurality of conductive traces (44/24 in Fig 2); an electronic component (10) mounted on a first major side of the device substrate and interconnected with the plurality of conductive traces; and a heat sink (50) having a raised feature (52), the heat sink affixed on a second major side of the device substrate (30) such that the raised feature is located directly below the electronic component (10: See Fig 3) (Col 3 lines 37-67). Regarding Claim 2, Cannizzaro discloses in Fig 3: The electronic device of claim 1, wherein the device substrate (30) is pretensioned before the heat sink (50) is affixed on the second major side of the device substrate (30). The limitation “is pretensioned before the heat sink is affixed on” in claim 2 is taken to be a product by process limitation, it is the patentability of the claimed product and not of recited process steps which must be established. Therefore, when the prior art discloses a product which reasonably appears to be identical with or only slightly different than the product claimed in a product-by process claim, a rejection based on sections 102 or 103 is fair. A product by process claim directed to the product per se, no matter how actually made, In re Hirao, 190 USPQ 15 at 17 (footnote 3). See In re Fessman, 180 USPQ 324,326(CCPA 1974); In re Marosi et al., 218 USPQ 289,292 (Fed. Cir. 1983); and particularly In re Thorpe, 227 USPQ 964,966 (Fed. Cir. 1985), all of which make it clear that it is the patentability of the final structure of the product “gleaned” from the process steps, which must be determined in a “product by process” claim, and not the patentability of the process. See also MPEP 2113. Moreover, an old or obvious product produced by a new method is not a patentable product, whether claim in “product by process” claim or not. Regarding Claim 3, Cannizzaro discloses in Fig 3: The electronic device of claim 1, wherein the heat sink (50) is affixed on the second major side of the device substrate by way of one or more fasteners (56). Regarding Claim 4, Cannizzaro discloses in Fig 3: The electronic device of claim 1, wherein the electronic component (10) overlaps the raised feature (52) by a predetermined distance (See Fig 3). Regarding Claim 5, Cannizzaro discloses in Fig 3: The electronic device of claim 1, wherein a top surface of the raised feature (52) is on a plane above a plane of a bulk portion of the heat sink (50). Regarding Claim 6, Cannizzaro discloses in Fig 3: The electronic device of claim 5, wherein the raised feature (52) and the bulk portion of the heat sink (50) are formed from a same contiguous material (See Fig 3). Regarding Claim 7, Cannizzaro discloses in Fig 3: The electronic device of claim 5, wherein the raised feature (52) is attached to the bulk portion of the heat sink (50). Note that the claim does not specify that the raised feature and the bulk portion are separate structures that are attached together. Regarding Claim 8, Cannizzaro discloses in Fig 3: The electronic device of claim 1, wherein the electronic component (10) includes a semiconductor die (12 in Fig 2) interconnected with the plurality of conductive traces (44). Regarding Claim 9, Cannizzaro discloses in Fig 3: The electronic device of claim 1, wherein the electronic device (12) is configured for operation at cryogenic temperatures. The wherein clause of " is configured for operation at cryogenic temperatures " is directed to a function or operational characteristic of the claimed electronic device. If the claim limitations are directed to function, property or characteristic of the apparatus and "the examiner provides a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flow from the teachings of the applied prior art" (quoting Ex Parte Levy, 17 USPQ2s 1461, 1464 (Bd. Pat. App. & Inter. 1990 under Section 2112.IV of the MPEP), then the burden of proof is shifted to the Applicant to show that the apparatus taught by the prior art reference cannot function or does not have the property or characteristic as recited. According to Section 2114 of the MPEP, "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)". Moreover, according to Section 2112.III of the MPEP, "Where applicant claims a composition in terms of a function, property or characteristic{,} and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103, expressed as a 102/103 rejection. “There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102.” In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977). This same rationale should also apply to product, apparatus, and process claims claimed in terms of function, property or characteristic. Therefore, a 35 U.S.C. 102/103 rejection is appropriate for these types of claims as well as for composition claims {underlined for emphasis}." Each of the limitation has been fully considered to the extent that the device taught by Cannizzaro inherently has or is reasonably capable of functioning or having the characteristic claimed. Basis in fact if provided by the fact that Cannizzaro teaches all of the claimed structural features of the claimed device. Alternatively, it would have been obvious to one of ordinary skill in the art that the device taught by Cannizzaro is reasonably capable of functioning or having as claimed in the wherein clause of claim 9 in light of the basis in fact provided above . 07-15 AIA Claim (s) 10, 12-20 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Cannizzaro et al in Fig 4 (US 5,739,586 hereinafter Cannizzaro4) . Regarding Claim 10, Cannizzaro4 discloses in Fig 4: A method comprising: mounting an electronic component (10) on a first major side of a device substrate (30), the electronic component interconnected with a plurality of conductive traces (24/44) of the device substrate; and affixing the device substrate on a heat sink (50), the heat sink having a raised feature (52) in thermal contact with a second major side of the device substrate (30) directly opposite of the electronic component (10) mounted on the first major side of the device substrate (See Fig 3) (Col 5 lines 12-67). Regarding Claim 12, Cannizzaro4 discloses in Fig 4: The method of claim 10, wherein the device substrate (30) is configured to remain in thermal contact with the raised feature (52) of the heat sink during exposure to a cryogenic temperature. Regarding Claim 13, Cannizzaro4 discloses in Fig 4: The method of claim 10, wherein a width dimension of the electronic component (10/18) is greater than a width dimension of the raised feature (52) by a predetermined distance. Regarding Claim 14, Cannizzaro4 discloses in Fig 4: The method of claim 10, wherein a top surface of the raised feature (52) in thermal contact with the second major side of the device substrate (30) extends vertically from a plane of a bulk portion of the heat sink (50) by a predetermined height. Regarding Claim 15, Cannizzaro4 discloses in Fig 4: The method of claim 10, wherein the electronic component (10) mounted on the first major side of the device substrate (30) includes a semiconductor die (12) interconnected with the plurality of conductive traces (24/44) of the device substrate. Regarding Claim 16, Cannizzaro4 discloses in Fig 4: An electronic device comprising: a device substrate (30) having a first major side and a second major side opposite of the first major side, a plurality of conductive traces (24/44) formed at the first major side of the device substrate; an electronic component (10/18) mounted on the first major side of the device substrate and interconnected with the plurality of conductive traces; and a heat sink (50) having a raised feature (52), the heat sink affixed on the second major side of the device substrate such that the raised feature is in thermal contact with the second major side of the device substrate (30) directly opposite of the electronic component (10/18) mounted on the first major side of the device substrate. Regarding Claim 17, Cannizzaro4 discloses in Fig 4: The electronic device of claim 16, wherein a width dimension of the electronic component (10/18) is greater than a width dimension of the raised feature (52) by a predetermined distance. Regarding Claim 18, Cannizzaro4 discloses in Fig 4: The electronic device of claim 16, wherein a top surface of the raised feature (52) in thermal contact with the second major side of the device substrate (30) extends vertically from a plane of a bulk portion (50) of the heat sink by a predetermined height. Regarding Claim 19, Cannizzaro4 discloses in Fig 4: The electronic device of claim 16, wherein the electronic component (10) mounted on the first major side of the device substrate (30) includes a semiconductor die (12) interconnected with the plurality of conductive traces (24/44) of the device substrate. Regarding Claim 20, Cannizzaro4 discloses in Fig 4: The electronic device of claim 16, wherein the device substrate (30) is configured to remain in thermal contact with the raised feature (52) of the heat sink during exposure to a cryogenic temperature. The wherein clause of " is configured to remain in thermal contact with the raised feature of the heat sink during exposure to a cryogenic temperature " is directed to a function or operational characteristic of the claimed electronic device. If the claim limitations are directed to function, property or characteristic of the apparatus and "the examiner provides a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flow from the teachings of the applied prior art" (quoting Ex Parte Levy, 17 USPQ2s 1461, 1464 (Bd. Pat. App. & Inter. 1990 under Section 2112.IV of the MPEP), then the burden of proof is shifted to the Applicant to show that the apparatus taught by the prior art reference cannot function or does not have the property or characteristic as recited. According to Section 2114 of the MPEP, "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)". Moreover, according to Section 2112.III of the MPEP, "Where applicant claims a composition in terms of a function, property or characteristic{,} and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the refe2111rence, the examiner may make a rejection under both 35 U.S.C. 102 and 103, expressed as a 102/103 rejection. “There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102.” In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977). This same rationale should also apply to product, apparatus, and process claims claimed in terms of function, property or characteristic. Therefore, a 35 U.S.C. 102/103 rejection is appropriate for these types of claims as well as for composition claims {underlined for emphasis}." Each of the limitation has been fully considered to the extent that the device taught by Cannizzaro inherently has or is reasonably capable of functioning or having the characteristic claimed. Basis in fact if provided by the fact that Cannizzaro teaches all of the claimed structural features of the claimed device. Alternatively, it would have been obvious to one of ordinary skill in the art that the device taught by Cannizzaro is reasonably capable of functioning or having as claimed in the wherein clause of claim 9 in light of the basis in fact provided above . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-21-aia AIA Claim (s) 11 is rejected under 35 U.S.C. 103 as being unpatentable over Cannizzaro et al (US 5,739,586 hereinafter Cannizzaro4) . Regarding Claim 11, Cannizzaro4 discloses in Fig 3: The method of claim 10, wherein the device substrate (30) is pretensioned when affixing the device substrate on the heat sink (50) such that pressure is exerted between the raised feature (52) and the device substrate. Examiner notes that the device substrate is attached to the heat sink via the bolts 56 and the conductive grease 54 and lands 22. Thus, the device substrate is pretensioned while it is being attached to the heat sink due to the pressure exerted by the bolts 56. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to NISHATH YASMEEN whose telephone number is (571)270-7564. The examiner can normally be reached Mon-Fri 9AM-6PM. 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, Lynne Gurley can be reached at 571-272-1670. 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. /NISHATH YASMEEN/Primary Examiner, Art Unit 2811 Application/Control Number: 18/598,009 Page 2 Art Unit: 2811 Application/Control Number: 18/598,009 Page 3 Art Unit: 2811 Application/Control Number: 18/598,009 Page 4 Art Unit: 2811 Application/Control Number: 18/598,009 Page 5 Art Unit: 2811 Application/Control Number: 18/598,009 Page 6 Art Unit: 2811 Application/Control Number: 18/598,009 Page 7 Art Unit: 2811 Application/Control Number: 18/598,009 Page 8 Art Unit: 2811 Application/Control Number: 18/598,009 Page 9 Art Unit: 2811 Application/Control Number: 18/598,009 Page 10 Art Unit: 2811 Application/Control Number: 18/598,009 Page 11 Art Unit: 2811 Application/Control Number: 18/598,009 Page 12 Art Unit: 2811
