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 .
Detailed Action
Restriction/Election
Applicant’s election of Group II (Claims 9-19), without traverse, in the response filed on 8/17/2026 is acknowledged.
Claim Rejections – 35 U.S.C. 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.
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-AlA 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 9 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gelorme (U.S. Patent Pub. No. 2005/0061474).
Regarding Claim 9
FIG. 2 of Gelorme discloses an apparatus, comprising: an integrated circuit (200) defining an external surface; a heat sink (202) defining a base; and a layer of electrically conductive solder (104) between the external surface of the integrated circuit and the base of the finned heat sink; wherein the interface between the integrated circuit and the electrically conductive solder includes an intermetallic bond.
Claims 9-12 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Furman (U.S. Patent Pub. No. 2011/0240279).
Regarding Claim 9
FIG. 1 of Furman discloses an apparatus, comprising: an integrated circuit (102) defining an external surface; a heat sink (104) defining a base (116); and a layer of electrically conductive solder (114) between the external surface of the integrated circuit and the base of the finned heat sink; wherein the interface between the integrated circuit and the electrically conductive solder includes an intermetallic bond.
Regarding Claim 10
The limitation “the intermetallic bond between the integrated circuit and the electrically conductive solder and the intermetallic bond between the heat sink and the electrically conductive solder are formed by heating the heat sink with a laser” is considered to be a process or functional limitation. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985), MPEP 2113.
Regarding Claim 11
FIG. 1 of Furman discloses the heat sink includes at least two cooling fins (112) extending from the base. The limitation “the intermetallic bond between the integrated circuit and the electrically conductive solder and the intermetallic bond between the heat sink and the electrically conductive solder are formed by directing the laser to the heat sink base and between the at least two cooling fins” is considered to be a process or functional limitation. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985), MPEP 2113.
Regarding Claim 12
The limitation “the intermetallic bond between the integrated circuit and the electrically conductive solder and the intermetallic bond between the heat sink and the electrically conductive solder are formed by moving the laser to different locations of the heat sink base and between the at least two cooling fins” is considered to be a process or functional limitation. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985), MPEP 2113.
Claim Rejections – 35 U.S.C. 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.
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 13 rejected under 35 U.S.C. 103 as being unpatentable over Furman, in view of Andre (U.S. Patent Pub. No. 2019/0380227).
Regarding Claim 13
Furman discloses Claim 9.
Furman is silent with respect to “a housing defining a cavity; and liquid coolant held within the cavity; wherein the integrated circuit and the heat sink are positioned in the cavity and immersed in the liquid coolant”.
FIG. 1 of Andre discloses a similar apparatus, comprising a housing (102/104) defining a cavity; and liquid coolant held within the cavity [0020]; wherein the integrated circuit and the heat sink are positioned in the cavity and immersed in the liquid coolant.
It would have been obvious to one of ordinary skill in the art before the effective filing of the claimed invention to modify the device of Furman, as taught by Andre. The ordinary artisan would have been motivated to modify Furman in the above manner for purpose of improving cooling system ([0006] of Andre).
Claims 13-15 rejected under 35 U.S.C. 103 as being unpatentable over Gelorme, in view of Flotta (U.S. Patent Pub. No. 2009/0294106).
Regarding Claim 13
Gelorme discloses Claim 9.
Gelorme is silent with respect to “a housing defining a cavity; and liquid coolant held within the cavity; wherein the integrated circuit and the heat sink are positioned in the cavity and immersed in the liquid coolant”.
FIG. 3 of Flotta discloses a similar apparatus, comprising a housing defining a cavity; and liquid coolant held within the cavity [0022]; wherein the integrated circuit (302) and the heat sink (322) are positioned in the cavity and immersed in the liquid coolant.
It would have been obvious to one of ordinary skill in the art before the effective filing of the claimed invention to modify the device of Gelorme, as taught by Flotta. The ordinary artisan would have been motivated to modify Gelorme in the above manner for purpose of providing an efficient and low-risk cooling ([0003] of Flotta).
Regarding Claim 14
The recitation “during operation of the integrated circuit: the integrated circuit generates heat, the heat from the integrated circuit heats the liquid coolant, the heat from the liquid coolant heats the housing, and the housing heats the environment surrounding the housing” is functional limitation. When the structure recited in the prior art is substantially identical to that of the claimed invention, then the claimed properties or functions are presumed to be inherent. Or where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. See MPEP 2112.01. 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)
Regarding Claim 15
The recitation “the heat from the integrated circuit heats the liquid coolant to a temperature at which the liquid coolant transitions to a vapor or a gas, and the coolant in the vapor or gas state condenses to a liquid when the heat from the liquid coolant heats the housing” is functional limitation. When the structure recited in the prior art is substantially identical to that of the claimed invention, then the claimed properties or functions are presumed to be inherent. Or where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. See MPEP 2112.01. 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)
Claim 16 rejected under 35 U.S.C. 103 as being unpatentable over Gelorme and Flotta, in view of Chen (U.S. Patent Pub. No. 2022/0141998).
Regarding Claim 16
Gelorme as modified by Flotta discloses Claim 13.
Gelorme as modified by Flotta is silent with respect to “the housing includes one or more cooling fins”.
FIG. 3 of Chen discloses a similar apparatus, wherein the housing includes one or more cooling fins (110).
It would have been obvious to one of ordinary skill in the art before the effective filing of the claimed invention to modify the device of Gelorme, as taught by Chen. The ordinary artisan would have been motivated to modify Gelorme in the above manner for purpose of improving heat dissipation efficiency ([0006] of Chen).
Claim 17 rejected under 35 U.S.C. 103 as being unpatentable over Gelorme Flotta and Chen, in view of Zhuang (CN 209409935, machine-translation provided).
Regarding Claim 17
Gelorme as modified by Flotta and Chen discloses Claim 16.
Gelorme as modified by Flotta and Chen is silent with respect to “the housing is suspension knuckle, wherein the suspension knuckle is an integral member and load bearing member of a vehicle suspension system”.
FIG. 1 of Zhuang discloses a similar apparatus, wherein the housing is suspension knuckle, wherein the suspension knuckle is an integral member and load bearing member of a vehicle suspension system [0005].
It would have been obvious to one of ordinary skill in the art before the effective filing of the claimed invention to modify the device of Gelorme, as taught by Zhuang. The ordinary artisan would have been motivated to modify Gelorme in the above manner for purpose of providing a vehicle GPS position device ([0004] of Zhuang).
Claims 18 and 19 rejected under 35 U.S.C. 103 as being unpatentable over Gelorme, in view of Flotta, in view of Zhong (U.S. Patent Pub. No. 2021/0104450), in view of Zhuang.
Regarding Claim 18
Gelorme discloses Claim 9.
Gelorme is silent with respect to “a suspension knuckle housing defining a cavity and one or more cooling fins, wherein the suspension knuckle is a structural and load bearing member of a vehicle suspension system and the suspension knuckle includes a wheel hub or a wheel spindle; and liquid coolant held within the cavity; wherein the integrated circuit and the heat sink are positioned in the cavity and immersed in the liquid coolant, and during operation of the integrated circuit the integrated circuit generates heat, the heat from the integrated circuit heats the liquid coolant to a temperature at which the liquid coolant transitions to a vapor or a gas, the heat from the liquid coolant heats the housing resulting in cooling of the vapor or gas coolant and the coolant transitioning from a gas or a vapor to a liquid, and the housing heats the environment surrounding the housing”.
FIG. 3 of Flotta discloses a similar apparatus, comprising a housing defining a cavity; and liquid coolant held within the cavity [0022]; wherein the integrated circuit (302) and the heat sink (322) are positioned in the cavity and immersed in the liquid coolant.
It would have been obvious to one of ordinary skill in the art before the effective filing of the claimed invention to modify the device of Gelorme, as taught by Flotta. The ordinary artisan would have been motivated to modify Gelorme in the above manner for purpose of providing an efficient and low-risk cooling ([0003] of Flotta).
Gelorme as modified by Flotta is silent with respect to “a suspension knuckle housing defining a cavity and one or more cooling fins, wherein the suspension knuckle is a structural and load bearing member of a vehicle suspension system and the suspension knuckle includes a wheel hub or a wheel spindle”.
FIG. 1 of Zhong discloses a similar apparatus, wherein the housing includes one or more cooling fins (120).
It would have been obvious to one of ordinary skill in the art before the effective filing of the claimed invention to modify the device of Gelorme, as taught by Zhong. The ordinary artisan would have been motivated to modify Gelorme in the above manner for purpose of improving heat dissipation efficiency ([0002] of Zhong).
Gelorme as modified by Flotta and Zhong is silent with respect to “a suspension knuckle housing”, “the suspension knuckle is a structural and load bearing member of a vehicle suspension system and the suspension knuckle includes a wheel hub or a wheel spindle”.
FIG. 1 of Zhuang discloses a similar apparatus, comprising a suspension knuckle housing wherein the housing is suspension knuckle, wherein the suspension knuckle is an integral member and load bearing member of a vehicle suspension system [0005].
It would have been obvious to one of ordinary skill in the art before the effective filing of the claimed invention to modify the device of Gelorme, as taught by Zhuang. The ordinary artisan would have been motivated to modify Gelorme in the above manner for purpose of providing a vehicle GPS position device ([0004] of Zhuang).
The recitation “the heat from the integrated circuit heats the liquid coolant to a temperature at which the liquid coolant transitions to a vapor or a gas, the heat from the liquid coolant heats the housing resulting in cooling of the vapor or gas coolant and the coolant transitioning from a gas or a vapor to a liquid, and the housing heats the environment surrounding the housing” is functional limitation. When the structure recited in the prior art is substantially identical to that of the claimed invention, then the claimed properties or functions are presumed to be inherent. Or where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. See MPEP 2112.01. 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)
Regarding Claim 19
The limitation “the intermetallic bond between the integrated circuit and the electrically conductive solder and the intermetallic bond between the heat sink and the electrically conductive solder are formed by heating the heat sink with a laser” is considered to be a process or functional limitation. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985), MPEP 2113.
Pertinent Art
20080271875, 20190360764, 20190387641.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHENG-BAI ZHU whose telephone number is (571)270-3904. The examiner can normally be reached on 11am – 7pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Chad Dicke can be reached on (571)270-7996. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHENG-BAI ZHU/Primary Examiner, Art Unit 2897
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