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 .
Reply Under 37 CFR 1.111
The submission of the reply filed on 6/23/2026 to the non-final Office action of 04/27/2026 is acknowledged. The Office action on currently pending elected claims 1, 2, and 21-23 follows.
Claim Objections
Claim 1 is objected to because of the following informalities: ungrammatical limitations present: the “horizonal [sic] plane”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 2, and 21-23, are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites new limitations: “an angle between the first (second) connecting terminal and the horizonal [sic] plane is less than 30 degrees excluding 0 degrees”.
The aforementioned limitations do not have support in the original specification as filed. First, the limitation “excluding 0 degrees” is not supported by the original specification and constitutes an impermissible new matter. Nowhere in the specification is taught about any “exclusion”.
Second, the specification defines the “horizontal plane” as the “xy-plane” (p. 14, last three lines). However, judging by the drawings (e.g., see Fig. 2), the “xy-plane” is a vertical (i.e., not the “horizontal” one).
The remaining dependent claims have been also rejected since they inherit the aforementioned problems of the independent claim 1.
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.
Claims 1, 2, and 21-23, are 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 1 recites new limitations: “an angle between the first (second) connecting terminal and the horizonal [sic] plane is less than 30 degrees excluding 0 degrees”.
It’s not clear what said “horizonal [sic] plane” is. The specification defines the “horizontal plane” as the “xy-plane” (p. 14, last three lines). However, judging by the drawings (e.g., see Fig. 2), the “xy-plane” is a vertical (i.e., not the “horizontal” one). Also, the claimed “angle” is a relative term, since it depends on the general orientation of the claimed device. Applicant is advised to define the “angle” between specific physical components of the device, not between the physical components and the “plane”.
The remaining dependent claims have been also rejected since they inherit the aforementioned problems of the independent claim 1.
Claim Rejections - 35 USC § 102/103
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 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.
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 1 and 2, as best understood, is rejected under 35 U.S.C. 102(a)(1) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over CN 210349834 to Zhao et al. (hereafter “Zhao”, cited in IDS).
Regarding claim 1, Zhao discloses a thermally conductive device (Fig. 3 and English translation of record), comprising: an electrically insulating but thermally conductive layer (33) having a top surface, a bottom surface (opposite to the top surface), and a sidewall (i.e., inherently present left vertical side of (33), Fig. 3), wherein the top surface is opposite to the bottom surface, and the sidewall (i.e., the left vertical side of (33)) connects to the top surface and the bottom surface (Fig. 3); a first thermally conductive lead frame (32, 51, 222) having a top metal plate (32), a first extending part (i.e., a portion of (32) positioned between (51) and (33)), a second extending part (51), and a first connecting terminal (222), wherein: the top metal plate is disposed on the top surface of the electrically insulating but thermally conductive layer;
the first extending part is parallel to the electrically insulating but thermally conductive layer, and extends from the top metal plate and beyond the sidewall of the electrically insulating but thermally conductive layer; the second extending part extends from the first extending part and extends beyond the bottom surface of the electrically insulating but thermally conductive layer (Fig. 3); and the first connecting terminal (222) is connected to the second extending part (51) and has a first bottom surface (adjacent the PCB (20)); and a second thermally conductive lead frame (31, 311, 2211) having a bottom metal plate (31), a third extending part (311), and a second connecting terminal (2211), wherein: the bottom metal plate is disposed on the bottom surface of the electrically insulating but thermally conductive layer; the third extending part extends from the bottom metal plate and extends in a direction away from the electrically insulating but thermally conductive layer (Fig. 3); and the second connecting terminal (2211) is connected to the third extending part (311) and has a second bottom surface (adjacent the PCB (20)), wherein: the first connecting terminal (222) and the second connecting terminal (2211) extend toward each other; an angle between the first connecting terminal and the horizonal plane is less than 30 degrees excluding 0 degrees (inherently, since the entire device can be oriented so as to achieve the claimed angle); an angle between the second connecting terminal and the horizonal plane is less than 30 degrees, excluding 0 degrees (inherently, since the entire device can be oriented so as to achieve the claimed angle); and between the first connecting terminal and the second connecting terminal, one is connected to a hot zone, and the other is connected to a cold zone (inherently, since the first and second terminals in Zhao are connected to different portions of the PCB (20) with different temperatures).
Alternatively, it would have been obvious to a person of the ordinary skill in related arts before the effective filing date of the claimed invention to have oriented the entire devise of Zhao so the angle between the first and second connecting terminal and the horizonal plane is less than 30 degrees, excluding 0 degrees, as claimed, as an obvious design choice, in order to achieve desired space utilization, assembly requirements, etc., since it has been held that rearranging parts of an invention involves only routine skill in the art. See In re Japikse, 86 USPQ 70; In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975). Also, all claimed elements were known in the prior art and one skilled in the art could have combined / modified the elements as claimed by known methods with no change in their respective functions, and the combination / modification would have yielded predictable results to one of ordinary skill in the art before the effective filing date of the claimed invention. See KSR International Co. v. Teleflex Inc., 550 U.S.___, 82 USPQ2d 1385 (2007).
Regarding claim 2, as best understood, Zhao discloses (Fig. 3) that the electrically insulating but thermally conductive layer (33) has a length (i.e., in a horizontal direction, Fig. 3); the first extending part (i.e., a portion of (32) positioned between (51) and (33)) extends beyond the sidewall (i.e., beyond the left vertical side of (33)) by a first distance (i.e., between (51) and the left end of (33)); and if the sum of the length and the first distance are calculated as 100%, the first distance ranges from 19% to 51% (Fig. 3 clearly shows the claimed range).
Alternatively, it would have been obvious to a person of the ordinary skill in related arts before the effective filing date of the claimed invention to have selected any optimal desired range of the first distance in relation to the sum of the length and the first distance, including as claimed, in order to achieve desired thermal (e.g., rate of heat dissipation, etc.) and mechanical (e.g., dimensions, weight, space utilization, etc.) characteristics of the device, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Aller, 105 USPQ 233. Also, a change in size is generally recognized as being within the level of ordinary skill in the art. See In re Rose, 105 USPQ 237 (CCPA 1955); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976); Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Claim Rejections - 35 USC § 103
Claims 21-23, as best understood, are rejected under 35 U.S.C. 103 as being unpatentable over Zhao taken alone.
Regarding claims 21 and 22, Zhao discloses that the electrically insulating but thermally conductive layer (33) is made of ceramic (see English translation, p. 5, par. 3), but does not specify which particular ceramic is used as recited in claim 22 and also does not disclose any alternative materials as recited in claim 21.
Since all claimed materials have been notoriously known and widely used in related arts before the effective filing date of the claimed invention, it would have been also obvious to a person of the ordinary skill in related arts before the effective filing date of the claimed invention to have selected any of the known claimed materials for making of the electrically insulating but thermally conductive layer in Zhao, in order to achieve desired thermal and mechanical characteristics of the device, while not exceeding targeted production costs thereof, 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 a matter of obvious design choice. See In re Leshin, 125 USPQ 416.
Regarding claim 23, Zhao does not disclose that a roughness (Ra) of the top surface and the bottom surface of the electrically insulating but thermally conductive layer ranges from
0.01 μm to 10 μm.
It would have been obvious to a person of the ordinary skill in related arts before the effective filing date of the claimed invention to have provided any desired optimal roughness for the top surface and the bottom surface of the electrically insulating but thermally conductive layer in Zhao, including as claimed, so as to provide desired sufficient peel strength, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Aller, 105 USPQ 233. Also, a change in size is generally recognized as being within the level of ordinary skill in the art. See In re Rose, 105 USPQ 237 (CCPA 1955); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976); Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). Also, it has been held that discovering an optimum value of a result (the result is a desired peel strength) effective variable (the variable is the roughness (Ra)) involves only routine skill in the art. See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Response to Arguments
Applicant’s arguments have been considered but are moot in view of the new grounds of rejection. The rejection has been modified to meet the limitations of the amended claim(s) as presented above.
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 Anatoly Vortman whose telephone number is (571)272-2047. The examiner can normally be reached Monday-Thursday, between 10 am and 8:30 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jayprakash N. Gandhi can be reached at 571-272-3740. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Anatoly Vortman/
Primary Examiner
Art Unit 2841
/AV/
7/21/2026
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