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 Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “an electronic control unit” in claim 1. The phrase has been examined as -- an electronic controller --.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claim(s) 1, 4, 6, 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over ISLAM et al. US 2021/0281149 Al in view of Song US 20190319551 A1.
Re claim 1, ISLAM et al. teach a cooling system for an electric vehicle wheel control system, comprising: a housing (housing enclosing 280, paras 51-53, para 51 lines 3-9, also annotated fig showing a portion of housing) including an interior surface defining a fluid tight coolant cavity (para 51); dielectric coolant pooled within the fluid tight coolant cavity (paras 51-53); and an electronic control unit for controlling a wheel assembly of an electric vehicle, the electronic control unit including a printed circuit board (para 53 lines 4-8) and a power inverter circuit (para 42 last four lines), the electronic control unit being positioned within the fluid tight coolant cavity with the power inverter circuit and the printed circuit board (para 53 lines 4-8) at least partially submerged in the dielectric coolant (para 42 last four lines);
wherein the fluid tight coolant cavity is formed within a load bearing component (600, 110, 800 housing) of the electric vehicle suspension system (without defining the suspension system the limitations are interpreted to be within the bounds and/or connections of the system, para 27), wherein the load bearing component of the electric vehicle suspension system is a suspension knuckle (para 27, noting the outer portion of one size is a knuckle), wherein the fluid tight coolant cavity is formed when the suspension knuckle and an electronic control unit cover (700-1, 700-2) are connected to one another ( noting that all parts are connected in the final assembly, figs),
wherein during operation the electronic control unit controls a wheel assembly of an electric vehicle (fig 4, para 11), the temperature of the power inverter increases, the increasing temperature of the power inverter increases the temperature of the dielectric coolant, the increasing temperature of the dielectric coolant results in the dielectric coolant transforming from a liquid to a gas and/or a vapor, the dielectric coolant in the gas and/or vapor form condenses on the portion of the interior surface of the fluid tight coolant cavity that is not in contact with the liquid dielectric coolant, and the condensed dielectric coolant migrates to the pooled dielectric coolant.
Additionally, Song teach the power inverter circuit and the printed circuit board at least partially submerged in the dielectric coolant to provide cooling for the different portions of the circuit (claims 17, 12, 9).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to include cooling details as taught by Song in the ISLAM et al. invention in order to advantageously allow for lighter weight heat sink cooling.
Additionally noting that for clarity, the recitation “the temperature of the power inverter increases, the increasing temperature of the power inverter increases the temperature of the dielectric coolant, the increasing temperature of the dielectric coolant results in the dielectric coolant transforming from a liquid to a gas and/or a vapor, the dielectric coolant in the gas and/or vapor form condenses on the portion of the interior surface of the fluid tight coolant cavity that is not in contact with the liquid dielectric coolant, and the condensed dielectric coolant migrates to the pooled dielectric coolant” has been considered a recitation of intended use. It has been held that the recitation with respect to the matter in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. See MPEP 2114. In the instant case, the prior art meets all of the structural limitations, and is therefore capable of performing the claimed recitations set forth above. Furthermore, the examiner notes that the inclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims. See MPEP 2115. Finally, the intended fluid used in the apparatus to perform the intended function does not affect the patentability of the apparatus, since the apparatus is capable of using said intended fluid. See MPEP 2144.07.
It is also unclear whether or not the limitations after the phrase “when” actually occur/are required since the term “when” is a conditional phrase.
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Re claim 4, ISLAM et al. teach wherein the suspension knuckle defines a suspension system connection member for attaching to another component of the vehicle suspension system and wheel connection member for attaching to a wheel hub or wheel spindle (para 27; it is noted that the italicized limitation is a functional limitation which the reference is capable of performing).
Re claim 6, ISLAM et al. teach wherein the power inverter circuit is soldered to a heat sink (noting 600 , 370 or 800 can act as heat sinks).
The recitation of “is soldered” is considered to be a product-by-process limitation. In product-by-process claims, “once a product appearing to be substantially identical is found and a 35 U.S.C. 102/103 rejection [is] made, the burden shifts to the applicant to show an unobvious difference.” MPEP 2113. This rejection under 35 U.S.C. 102/103 is proper because the “patentability of a product does not depend on its method of production.”
Re claim 31, it would have been an obvious matter of design choice to provide wherein the depth of the fluid tight coolant cavity can vary, such as to increase or decrease the volume of the lower portion of the fluid tight coolant cavity where the liquid coolant collects, which the depth of the fluid tight coolant cavity from the wall of the fluid tight coolant cavity formed by the suspension knuckle and the opposing wall of the electronic control unit cover when the suspension knuckle and the electronic control unit cover are connected together (noting the limitation is considered to be broad and generally require a change in size, since no actuator are disclosed to actively make the cavity larger or smaller during operation), since such a modification would have involved a mere change in the size of the component. A change in size is generally recognized as being within the level of ordinary skill in the art. See MPEP 2144.04, section IV, part A.
It is also unclear whether or not the limitations after the phrase “when” actually occur/are required since the term “when” is a conditional phrase.
Claim(s) 5, 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over ISLAM et al. US 2021/0281149 Al in view of Song US 20190319551 A1 in view of Ankit US 20230158879 A1.
Re claim 5, ISLAM et al. fail to explicitly teach frame details.
Ankit teach wherein the load bearing component of the electric vehicle suspension system defines an external surface, and the external surface includes cooling fins (annotated fig) to brace adjacent parts .
It would have been obvious to one of ordinary skill in the art at the time the invention was made to include frame details as taught by Ankit in the ISLAM et al. invention in order to advantageously allow for strength in a frame.
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Re claim 7, ISLAM et al. teach and the power inverter circuit is soldered to the heat sink by directing a laser to the heat sink between the two or more cooling fins (see the rejection of claim 6).
The recitation of “is soldered to the heat sink by directing a laser to the heat sink between the two or more cooling fins” is considered to be a product-by-process limitation. In product-by-process claims, “once a product appearing to be substantially identical is found and a 35 U.S.C. 102/103 rejection [is] made, the burden shifts to the applicant to show an unobvious difference.” MPEP 2113. This rejection under 35 U.S.C. 102/103 is proper because the “patentability of a product does not depend on its method of production.”
ISLAM et al. fail to explicitly teach frame details.
Ankit teach the heat sink includes two or more cooling fins (annotated fig, see the rejection of claim 6) to brace adjacent parts .
It would have been obvious to one of ordinary skill in the art at the time the invention was made to include frame details as taught by Ankit in the ISLAM et al. invention in order to advantageously allow for strength in a frame.
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Response to Arguments
Applicant’s arguments, see reply, filed 4/14/2026, with respect to 112 rejection of claim 8 have been fully considered and are persuasive. The 112 rejection of claim 8 has been withdrawn.
Applicant's arguments filed 4/14/2026 have been fully considered but they are not persuasive.
Applicant argues that Islam nor Song allegedly fails to teach new scope of claim 1. However, the scope of the claim has been changed in the latest reply and therefore the examiner is now relying on a new ground of rejection in which Islam teach the recited "the fluid tight coolant cavity is formed within a load bearing component of the electric vehicle suspension system", "the load bearing component of the electric vehicle suspension system is a suspension knuckle" and "the fluid tight coolant cavity is formed when the suspension knuckle and an electronic control unit cover are connected to one another" (see detailed rejection above). Therefore, the applicants’ arguments are not persuasive.
The applicant argues that the citation given do not teach specifically “when the suspension knuckle and an electronic control unit cover are connected to one another". The examiner respectfully disagrees. This limitation is broad and is interpreted to be naturally taught by all the finally assembly pieces being connected to each other in the final product at which point “when” is met.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Song is not relied upon to teach. "the fluid tight coolant cavity is formed within a load bearing component of the electric vehicle suspension system", "the load bearing component of the electric vehicle suspension system is a suspension knuckle" and "the fluid tight coolant cavity is formed when the suspension knuckle and an electronic control unit cover are connected to one another". Islam is relied upon to teach "the fluid tight coolant cavity is formed within a load bearing component of the electric vehicle suspension system", "the load bearing component of the electric vehicle suspension system is a suspension knuckle" and "the fluid tight coolant cavity is formed when the suspension knuckle and an electronic control unit cover are connected to one another" (see detailed rejection above).
Applicant argues the claims dependent on the independent claim(s) are allowable based upon their dependence from an independent claim. Examiner respectfully disagrees. The arguments with respect to claim(s) 1 have been addressed above. Thus, the rejections are proper and remain.
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 GORDON A JONES whose telephone number is (571)270-1218. The examiner can normally be reached 7:30-5 M-F PST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Len Tran can be reached at 571-272-1184. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GORDON A JONES/ Examiner, Art Unit 3763
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