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 .
Status of Claims
Claims 1-19 are pending in this application.
Foreign Priority
Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
Acknowledgment is made that the information disclosure statement has been received and considered by the examiner. If the applicant is aware of any prior art or any other co-pending applications not already of record, he/she is reminded of his/her duty under 37 CFR 1.56 to disclose the same.
Drawings
There are no objections or rejections to the drawings.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant's cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Rejections - 35 USC § 112
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.
Claims 1-19 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 pre-AIA the applicant regards as the invention.
Claim 1 recites the limitation “preparing first and second metal plates; stacking the first metal plates; stacking the insulating substrate on the first metal plate”. It is unclear whether there is one first metal plate or multiple first metal plates because hot terms are used in the claim. One of ordinary skill in the relevant art would not know what structures/steps are covered by the limitation. For these reasons, the claim is indefinite. In the interest of compact prosecution, the recitation will be interpreted as a single first metal plate. It is unclear what is meant by stacking the first metal plates because there is no clarity on what the first metal plate is stacked with respect to. Again, is there one first metal plate or a plurality thereof?
Claims 2-19 depend from rejected claim 1, include all limitations of claim 1 and therefore are rejected for the same reason.
Claim Rejections - 35 USC § 102
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 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 pre-AIA 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.
Claims 1, 2 and 8 are rejected under pre-AIA 35 U.S.C. 102(a)(1) as being anticipated by Tani et al. (US Patent Application Publication No 2016/0163617) hereinafter referred to as Tani.
Per Claim 1 Tani discloses a method of manufacturing a heat dissipation substrate device, comprising
preparing an insulating substrate (12);
preparing first (16/14) and second (14/16) metal plates; (first and second are arbitrary labels)
stacking the first metal plate; stacking the insulating substrate on the first metal plate; stacking a second metal plate on the insulating substrate; (as shown in figure 1B) and
performing a hot press process on the stacked first metal plate, the insulating substrate, and the second metal plate [0018], and
wherein a first thickness of the first metal plate is different from a second thickness of the second metal plate (as shown in figure 1B)
Per Claim 2 Tani discloses the method of claim 1 including where the first thickness of the first metal plate (16) is thinner than the second thickness of the second metal plate (14). (see figure 1B)
Per Claim 8 Tani discloses the method of claim 1 including where the first thickness of the first metal plate (14) is thicker than the second thickness of the second metal plate (16).
Allowable Subject Matter
Claims 3-7 and 9-19 are would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Cited Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Applicants are directed to consider additional pertinent prior art included on the Notice of References Cited (PTOL 892) attached herewith.
The Examiner has pointed out particular references contained in the prior art of record within the body of this action for the convenience of the Applicant.
Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMI VALENTINE MILLER whose telephone number is (571)272-9786. The examiner can normally be reached on Monday-Thursday 7am-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, Eva Montalvo can be reached on (571) 270-3829. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jami Valentine Miller/Primary Examiner, Art Unit 2818
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