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 .
This office action is in response to the application of 5/6/2024.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 31 and 37-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,114,465 (herein referred to as ‘465). Although the claims at issue are not identical, they are not patentably distinct from each other. Regarding claim 31, claim 1 of ‘465 discloses the recited method as recited including modifying a structure of the pre-modification immersive cooling system and using a high boiling point operating fluid as the operating fluid. Regarding claims 37 and 38, claims 1 and 2 of ‘465 discloses a method as recited, the method comprising removing one or more bellows from the immersive cooling system; and using an alternative operating fluid in which the operating fluid is a high boiling point operating fluid (since instant claim 37 only recites one operating fluid, this operating fluid is an alternative operating fluid). Regarding claim 39, ‘465 discloses a method as recited, the method comprising: modifying a structure of the pre-modification immersive cooling system; removing one or more bellows from the immersive cooling system (claim 2 of ‘465); and using an alternative operating fluid (since instant claim 39 only recites one operating fluid, this operating fluid is an alternative operating fluid). Regarding claim 40, the alternative operating fluid of ‘465 is a high boiling point operating fluid (claim 1 of ‘465).
Claim Rejections - 35 USC § 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.
Claims 31 and 37-40 are rejected under 35 U.S.C. 103 as being unpatentable over Hulse et al. (US 2020/0205318).
Regarding claim 31, Hulse et al. discloses an immersive cooling system (Figure 2A) which uses a high-boiling operating fluid [0061]. Hulse et al. does not disclose modifying the structure of the system, however, since Hulse et al. discloses the immersive cooling system, modifying the structure of the system would have involved a mere in the size or shape of a device, which is generally recognized as being within the level of ordinary skill in the art. Regarding claims 37-40. Hulse et al. discloses an immersive cooling system that uses a high-boiling point operating fluid and that does not comprise bellows. It would have been obvious to one of ordinary skill in the art at the time the invention was made to have used the device of Hulse et al. as the immersive cooling system, since the system does not comprise bellows, which eliminates the need to modify an existing system by removing the bellows. The end product is still an immersive cooling system without bellows.
Claim Rejections - 35 USC § 112
7. The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 31 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 31 recites the limitation "the substitute operating fluid " in line 4. There is insufficient antecedent basis for this limitation in the claim.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The prior art of Hulse et al. is pertinent to the Applicant’s invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Davis Hwu whose telephone number is (571)272-4904.
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 call the examiner or 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, 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.
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.
/DAVIS D HWU/Primary Examiner, Art Unit 3763
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