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 .
Election/Restrictions
Applicant previously elected without traverse Species A (Figures 1-2) in the reply filed on 2/12/2026.
Status of Claims
The status of the claims as filed in the submission dated 6/30/2026 are as follows:
Claims 3-4 are cancelled by the applicant;
Claims 16-17 are newly added;
Claims 1, 2, 5-17 are pending;
Claims 13 and 15 are withdrawn from consideration;
Claims 1, 2, 5-12, 14, and 16-17 are being examined.
Specification
The amended title of the invention was received on 6/30/2026 and is accepted.
The replacement abstract was received on 6/30/2026 and is accepted.
Drawings
The amended drawings were received on 6/30/2026 and are accepted.
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.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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:
“Fixing elements” in claim 14. The nonce term “element” is modified by the functional language of “fixing” without reciting sufficient structure to perform the recited function. Based on applicants’ disclosure (pages 40-41 and 44-45 of the specification), “fixing elements” will be interpreted as holes in the base for bolts/screws, clamps, or equivalent structure.
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.
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.
Claims 1, 2, 5-10, 14, 16, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Vanderwees (US2021/0222967A1, as cited in the IDS) in view of Yang (US2021/0410329A1).
Re Claim 1. Vanderwees teaches a heat exchanger (10) for cooling one or more electrical or electronic devices (21) (Figure 1; Paragraphs 33, 37), comprising:
a base (12) comprising an inlet port (30) for the entry of a coolant, an outlet port (32) for the exit of the coolant, a wall (generally denoted by 18) extending along a longitudinal direction, the direction which connects the inlet port and the outlet port of the base (Figure 1; Paragraphs 33-36, 43),
a cover (14) attached (at edges of 14 and 12) on the base and configured to establish a chamber (16) for the passage of the coolant between the inlet port and the outlet port of the base and wherein the cover comprises a wall extending along the longitudinal direction (Figure 1; Paragraphs 33-36, 43);
wherein the wall of the base or the wall of the cover or both comprise at least one heat exchange region (region at 21) adapted to transfer heat from an outer area to an inner area of the chamber and opposite the outer area (Figure 1; Paragraph 44; Heat will transfer from 21 at the outer area of 12 through the wall of 12 and into the interior chamber 16);
wherein the wall of the base or the wall of the cover or both comprises a structural metallic material which is selected from: steel; and a metallic material comprising aluminum as the ingredient in the highest amount by weight (Figure 1; Paragraphs 42 and 48-54 teach using aluminum for the base and cover); and,
the wall of the base or the wall of the cover or both comprising a structural metallic material extend at least one segment along the longitudinal direction wherein, at least one heat exchange region is arranged between the ends of said segment also according to the longitudinal direction (Figure 1; Paragraphs 33-36, 43; Plate 12 is considered the structural metallic material and the region of 12 occupied by 21 is considered the heat exchange region); and
at least one heat exchange region comprises a metallic heat transfer material (Figure 1; Paragraphs 42 and 48-54 teach using aluminum for the base and cover. Thus the region occupied by 21 comprises aluminum).
Vanderwees teaches the structural metallic material and the metallic heat transfer material are the same material (Figure 1; Paragraphs 48-54) but fails to specifically teach the structural metallic material and the metallic heat transfer material are different.
However, Yang teaches the structural metallic material (244) and the metallic heat transfer material (209) are different (Figure 2d; Paragraphs 24-28, 41; Yang teaches the structural frame 244 can be formed of steel and the heat transfer region 209 formed of copper. Thus Yang teaches the structural metallic material and the metallic heat transfer material are different). Yang teaches the benefit of the configuration is to prevent deformation while providing thin high heat transfer areas (Paragraphs 13, 21, 23, 41).
Therefore, in view of Yang's teaching, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the structural metallic material and the metallic heat transfer material of Vanderwees as different materials in order to provide high heat transfer at the heat transfer region while still providing structural support for the assembly to prevent deformation, thereby improving the overall heat transfer efficiency of the assembly. It would have been obvious to one having ordinary skill in the art at the time the invention was filed to form the structural metallic material and the metallic heat transfer material of Vanderwees as different materials, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as matter of obvious design choice. See MPEP 2144.07.
Re Claim 2. Vanderwees teaches the metallic heat transfer material in the at least one heat exchange region is selected from: steel; a metallic material comprising copper as the ingredient in the highest amount by weight; and a metallic material comprising aluminum as the ingredient in the highest amount by weight (Figure 1; Paragraphs 42 and 48-54 teach aluminum).
Re Claim 5. Vanderwees teaches the at least one segment of the structural metallic material is such that a plurality of heat exchange regions are arranged between the ends of said segment according to the longitudinal direction (Figure 1; The heat exchange regions is an abstract delineation, wherein any surface on 12 can arbitrability split into “heat exchange regions”).
Re Claim 6. Vanderwees teaches the wall of the base, of the cover, or of both, is a flat plate (Figure 1).
Re Claim 7. Vanderwees teaches the at least one heat exchange region is a continuous region in the metallic heat transfer material comprised in said region, said region being adapted to receive one or more electronic devices (21) (Figure 1; Paragraphs 33-37).
Re Claim 8. Vanderwees teaches an attachment material (i.e. aluminum atoms) between the metallic heat transfer material comprised in the at least one heat exchange region and the structural metallic material (Figure 1; Paragraphs 42 and 48-54).
Re Claim 9. Vanderwees teaches the attachment between the metallic heat transfer material comprised in the at least one heat exchange region and the structural metallic material is obtained by leak-tight sealing through the attachment material (Figure 1; Paragraphs 42 and 48-54; The continuous aluminum sheet will be leak-tight).
Re Claim 10. Vanderwees teaches the cover is made of a sheet metal and comprises a flat surface larger than the wall of the base and limited along the perimeter by a perimeter wall, wherein the perimeter wall of the cover is fixed to the base (Figure 1).
Re Claim 14. Vanderwees teaches sealing the two plates together at flanges (24) (Figure 1) but fails to specifically teach fixing elements configured to exert a force transverse to the wall of the base.
However, Yang teaches fixing elements (bolts 212 through holes in the base and cover) configured to exert a force transverse to the wall of the base (Figure 2d; Paragraphs 19, 30).
Therefore, in view of Yang's teaching, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to use fixing means to exert a force transverse to the wall of the base of Vanderwees in order to provide secure mounting of the heat exchanger to a heat exchange system, as is well understood in the art.
Re Claim 16. Vanderwees as modified by Yang teach wherein the metallic heat transfer material in the at least one heat exchange region is steel (Vanderwees Figure 1, Paragraphs 42 and 48-54; Yang Figure 2d, Paragraphs 13, 21, 23-28, 41). Yang teaches general steel but fails to specifically teach carbon steel. It would have been obvious to one having ordinary skill in the art at the time the invention was filed to select carbon steel, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as matter of obvious design choice. See MPEP 2144.07. The selection of any variation of steel is an obvious design choice that one of ordinary skill in the art could readily choose from to achieve a desired cost, strength, and heat transfer capability.
Re Claim 17. Vanderwees as modified by Yang teach at least one heat exchange region consists of a metallic heat transfer material (Vanderwees Figure 1, Paragraphs 42 and 48-54; Yang Figure 2d, Paragraphs 13, 21, 23-28, 41).
Claims 11 & 12 are rejected under 35 U.S.C. 103 as being unpatentable over Vanderwees (US2021/0222967A1, as cited in the IDS) in view of Yang (US2021/0410329A1) and in further view of Nakanishi (US7564129B2).
Re Claim 11. Vanderwees fails to specifically teach one or more fin blocks for heat exchange arranged inside the chamber for the passage of the coolant, wherein the at least one fin block for heat exchange is attached to the inner area of the wall of a heat exchange region and the at least one fin block is separated from the internal surface of the chamber located opposite, that is, if the fin block is attached to the wall of the base then the fin block is separated from the cover and, if the fin block is attached to the wall of the cover then the fin block is separated from the base.
However, Nakanishi teaches one or more fin blocks (5) for heat exchange arranged inside the chamber for the passage of the coolant, wherein the at least one fin block for heat exchange is attached to the inner area of the wall of a heat exchange region and the at least one fin block and is separated from the internal surface of the chamber located opposite, that is, if the fin block is attached to the wall of the base then the fin block is separated from the cover and, if the fin block is attached to the wall of the cover then the fin block is separated from the base (Figure 7 illustrates that the tips of the fins 5 are spaced apart from the surface 40; Column 8 lines 35-60).
Therefore, in view of Nakanishi 's teaching, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to add fin blocks to the chamber of Vanderwees in order to increase the heat transfer surface area, thereby increasing the heat transfer capabilities of Vanderwees. The use of internal fin blocks is well-known and understood in the art.
Re Claim 12. Vanderwees as modified by Nakanishi teach the fins comprise a metallic material comprising copper as the ingredient in the highest amount by weight; or a metallic material comprising aluminum as the ingredient in the highest amount by weight (Vanderwees Figure 1; Nakanishi Figure 7, Column 2 lines 42-54 teaches the fins are formed from aluminum-silicon carbide, wherein aluminum is the majority element). It would have been obvious to one having ordinary skill in the art at the time the invention was filed to form the fins from a metallic material comprising copper as the ingredient in the highest amount by weight; or a metallic material comprising aluminum as the ingredient in the highest amount by weight, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as matter of obvious design choice. See MPEP 2144.07.
Response to Arguments
Applicant's arguments filed 6/30/2026 have been fully considered but they are not persuasive.
Applicant asserts on page 8 of the reply that amending “fixing means” of claim 14 to “fixing element” would no longer invoke 112(f). The term “element” is still a nonce term that does not recite sufficient structure for performing the function. Accordingly, “fixing element” still invokes 112(f).
Applicant argues on pages 9-11 of the reply that Vanderwees fails to teach the structural metallic material and the heat exchange region. Vanderwees teaches a heat exchange region (region at 21) adapted to transfer heat from an outer area to an inner area of the chamber and opposite the outer area (Figure 1). In Vanderwees, heat will transfer from 21 at the outer area of 12 through the wall of 12 and into the interior chamber 16. Vanderwees further teaches a structural metallic material at 12 which extends along the rest of the area outside of the heat exchange region. Vanderwees teaches both the heat exchange region and the structural metallic material is composed of aluminum. Since both regions exist in Vanderwees, the applicant’s argument to the contrary is not persuasive.
Applicant argues on page 11 of the reply that Vanderwees fails to teach the structural metallic material and the heat transfer material are different materials. 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). In this instance, Yang is relied upon to teach the two distinct materials. Therefore, the applicants’ argument that Vanderwees fails to teach said limitation is not persuasive.
Applicant argues on page 12 of the reply that Yang does not teach “a region-based wall architecture”. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “region-based wall architecture”) are not recited in the rejected claim(s). 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).
Applicant argues on page 12 of the reply that Yang does not teach a wall comprising a structural metallic material and a heat exchange region. Yang clearly shows a structural metallic material (244) at the peripheral of the heat exchange region of 209. Yang teaches the structural frame 244 can be formed of steel and the heat transfer region 209 formed of copper. Thus, Yang teaches the structural metallic material and the metallic heat transfer material are different. Yang teaches the benefit of the configuration is to prevent deformation while providing thin high heat transfer areas (Paragraphs 13, 21, 23, 41). Therefore, the applicants’ argument is not persuasive.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, 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, Yang specifically teaches the benefit of the configuration is to prevent deformation while providing thin high heat transfer areas (Paragraphs 13, 21, 23, 41). Therefore, motivation from the prior art exists and the applicant’s argument is not persuasive.
Applicant argues on page 13 of the reply that Nakanishi does not teach the features of claim 1. However, since claim 1 is properly rejected by Vanderwees and Yang, the applicants’ argument that said features are lacking in Nakanishi is not persuasive.
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 TRAVIS RUBY whose telephone number is (571)270-5760. The examiner can normally be reached M-F: 9AM-5PM.
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, Jianying Atkisson can be reached at 571-270-7740. 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.
/TRAVIS RUBY/Primary Examiner, Art Unit 3763
Prosecution Insights