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
Claim 22 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/13/2026.
Claims 12-21 are directed to elected invention and examined on the merits.
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 12-21 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
There are many factors to consider when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any experimentation would be considered undue. See In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). These factors include:
Breadth of the claims
Nature of the invention
State of the prior art
Level of one of ordinary skill in the art
Predictability in the art
Amount of direction provide by the inventor
Existence of working examples; and
Quantity of experimentation needed to use the invention based on the content of the disclosure.
The breadth of the claims is broad, and not limited to any specific materials or application, path, shape, desired gap, or any defined contour or bead specifics. The nature of the invention involves application of determining the shape of a dispensing path using “a numerical calculation method” using some undefined “iterative calculation” of the change in cross section and area until some undefined “desired” gap. The state of the prior art is silent to various “numerical calculation method” capable of being utilized in such a manner and while the skill of one ordinary in the art is relatively high, the claims required unknown variables, undefine scope of the broadly claimed numerical calculation method with little predictability. Additionally, while the specification describes one single numerical calculation method can be used as claimed, the specification fails to include any working examples or direction as to a representative number of species of the seemingly infinite number of possible numerical calculation methods with iterative calculations that can, should or needs to be used to result in determining the shape and until undefined desired gap is reached. This undue experimentation would encompass determining what numerical calculations can be utilized in an iterative calculation to successfully determine the shape of the dispensing path and amount or thickness along the dispensing path as required by the present claims. See In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
Claim 13 further defines the scope of the “calculation” as a formula that includes “an empirical factor”; however, the specification nor the claims define the scope of the term and what or how the ordinary skilled artisan can ascertain the empirical factor as claimed nor how to use a generic and undefine empirical factor. The specification states that the “empirical factor s describes the speed at which an applied contour of the filling material changes into a round contour during squeezing between the surfaces”; however, does not provide any guidance as to how the speed description is arrived at or how to determine the empirical factor from the described speed. Therefore, the specification does not describe with sufficient specificity this requirement, nor does the specification provide any working examples or direction as to how to determine the empirical factor from an infinite or undefined options that would result in providing a velocity at a point that meets the claim requirements nor that is within the scope of the claims as drafted.
Claim 14-21 are rejected as failing to cure the deficiencies of the claims from which they depend.
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 12-21 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 12 is a method “for determining a shape of a dispensing path and a local application amount of the flowable filling material along the dispensing path” and determining such by using a numerical calculation that is an iterative calculation of the “change in the cross section area of the filling material . . . until the desired gap between the two surfaces is reached”; however, the claims actively requiring the filling material is “applied in a shape” and there is no active process steps that illustrate how to determine the shape of the dispensing path. Therefore it is unclear how the active steps as claimed accomplish the claimed method. In other words, the claims indicate that “the shape . . . and local application amount or thickness . . . are determined using a numerical calculation”; however, there is no link between the claimed numerical calculation and how it relates to determining the shape of the dispensing path and a local application amount.
Claim 13 requires v - and v (with and without underline) and it is unclear if these are the same or different variables.
Claim 16 requires “the local application amount of the filling material s changed along the dispensing path”; however, “material s changed” is unclear.
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 (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.
Claim(s) 12 and 15-21 are is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 8481103 by Davidson
Claim 12: Davidson discloses a method for determining a shape of a dispensing path and a local application amount of a flowable filling material along the dispensing path between surfaces of two components (see Figure 2 accompanying text), wherein the filling material is used to seal a gap between the two components (see column 1, lines 18-40), the method comprising the following steps: applying the filling material to a first surface of a first component of the two surfaces (see e.g. claim 1 “depositing the interface material on the first surface in an optimized deposition pattern”); moving the two surfaces towards each other so that, when a gap between the two surfaces is being reduced and a cross-sectional area of the filling material running parallel between the two surfaces is increasing (see e.g. entire reference, Figure 2, claim 1 stating “compressing the first and second surfaces, to spread out the discrete regions of the interface material”), the filling material is squeezed until a desired gap is reached (Figure 2, column 3 lines 27-29 “ is compressed to a desired layer thickness”); wherein the filling material is applied in a shape of at least one bead including at least one curve section along the dispensing path (see e.g. Figure 8 and accompanying text related to various patterns, e.g. herringbone), wherein a shape of the at least one curve section of the at least one bead and its local application amount or thickness along the dispensing path are determined using a numerical calculation method (modeling, see column 2, lines 48-60, and wherein the numerical calculation method includes an iterative calculation of a change in the cross-sectional area of the filling material, the area of the filling material running centrally between the two surfaces, until the desired gap between the two surfaces is reached (see Figure 2, “ modeling the flow pattern with a computer program”, see column 5-column 6, “ A module formed with that TIM deposition pattern is then constructed and tested against a best prior example according to the optimization criteria. A genetic algorithm may then be employed, in conjunction with computational flow dynamics software and an appropriate model (modified as may be appropriate to reflect the results of experimentation) to alter the TIM deposition pattern seeking an optimal solution, with routine testing after each iteration.”) .
Claim 15: Davidson discloses shape of the at least one curve section and/or the local application amount of the filling material is changed along the dispensing path until a minimum total amount of the filling material results in complete coverage of a target cross-sectional area between the two surfaces upon the desired gap being reached (see “facilitate wicking into the void areas”, column 7, lines 56-57, where the void areas read on target area as claimed, column 4, lines 1-25, “terminate the squeezing just after the final continuous TIM layer is achieved.”).
Claim 16: Davidson discloses shape of the at least one curve section and/or the local application amount of the filling material changed along the dispensing path until a minimum process time for applying the filling material results upon the desired gap being reached (see column 5, lines 52-61 “ The location of the TIM may be determined empirically, or algorithmically, using an optimization criteria for optimizing solely or jointly one or more of processing time, peak squeezing force, average squeezing force, squeezing force profile, thermal conductivity, operating temperature, prescribed thermal conductivity as a function of location, prescribed temperature conductivity as a function of location, peak operating temperature as a function of location, cost, cost-benefit, and yield.”)
Claim 17: Davidson discloses the shape of the at least one curve section and/or the local application amount of the filling material is changed along the dispensing path until a minimum required pressing force results during a joining of the two surfaces until the desired gap between the two surfaces is reached (see column 5, lines 52-61 “ The location of the TIM may be determined empirically, or algorithmically, using an optimization criteria for optimizing solely or jointly one or more of processing time, peak squeezing force, average squeezing force, squeezing force profile, thermal conductivity, operating temperature, prescribed thermal conductivity as a function of location, prescribed temperature conductivity as a function of location, peak operating temperature as a function of location, cost, cost-benefit, and yield.”)
Claim 18: Davidson discloses the shape of the at least one curve section and/or the local application amount of the filling material is changed along the dispensing path until, with a specified coverage of the target cross-sectional area, a minimal waste of filling material results upon the desired gap being reached (column 4, lines 1-25, “sufficiently many locations and sufficiently small amounts such that many islands of interface material spread out to form a thin homogeneous final layer for example, in minimal time and/or with minimal squeezing force”, “terminate the squeezing just after the final continuous TIM layer is achieved.”)
Claim 19: Davidson discloses the shape of the at least one curve section and/or the local application amount of the filling material is changed along the dispensing path until an optimum of a specified weighting between a specified coverage of the cross-sectional area of the filling material between the two surfaces, a minimum process time for applying the filling material, a minimum required pressing force during joining of the two surfaces, and a minimal waste of filling material with the specified coverage of the cross-sectional area is achieved, until the desired gap is reached (see column 4, lines 1-25, such as “More generally, optimization criteria may be applied according to one or more of, but not limited to, processing time, peak squeezing force, average squeezing force, squeezing force profile, thermal conductivity, TIM module operating temperature, prescribed thermal and/or temperature conductivity as a function of location, peak operating temperature as a function of location, module cost, cost-benefit, and module yield” and column 5, lines 52-61 “ The location of the TIM may be determined empirically, or algorithmically, using an optimization criteria for optimizing solely or jointly one or more of processing time, peak squeezing force, average squeezing force, squeezing force profile, thermal conductivity, operating temperature, prescribed thermal conductivity as a function of location, prescribed temperature conductivity as a function of location, peak operating temperature as a function of location, cost, cost-benefit, and yield.”).
Claim 20: The method according to claim 12, wherein, after joining of the two components, the local application amount of the filling material and the shape of the dispensing path are checked using at least one control device, and that, in the event of deviations from target values as regards the local application amount and/or the shape of the dispensing path, a change in the local application amount of the filling material and/or in the dispensing path is carried out using a control loop (see e.g. column 5-6 stating “A module formed with that TIM deposition pattern is then constructed and tested against a best prior example according to the optimization criteria. A genetic algorithm may then be employed, in conjunction with computational flow dynamics software and an appropriate model (modified as may be appropriate to reflect the results of experimentation) to alter the TIM deposition pattern seeking an optimal solution, with routine testing after each iteration. Of course, a skilled worker may guide the process, but that is not necessary.”, where routine testing after each iteration reads on the “check using at least one control device” giving the term its broadest reasonable interpretation)
Claim 21: Davidson discloses a heat-conducting material or a sealing material or an adhesive is used as filling material (see e.g. column 2, lines 24-26, “to provide a minimum layer thickness of high thermal conductivity material proximate to a region of required high thermal conductivity”).
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.
Claim(s) 12 and 15-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Davidson.
Claim 12 and 21: While the examiner maintains the position as set forth above, the examiner notes Davidson fails to explicitly disclose a calculation of the “change in the cross-sectional area of the filling material” until the desired gap is achieved; however, generally discloses the “algorithm may then be employed, in conjunction with computational flow dynamics software and an appropriate model (modified as may be appropriate to reflect the results of experimentation) to alter the TIM deposition pattern seeking an optimal solution, with routine testing after each iteration”, see also Figure 2 related to change in area of filling material. Davidson discloses what can reasonably be considered optimizing to achieve a desired gap “Squeezing force 3 is applied to objects 1 and 2 so that the TIM spreads out over surface 4, ultimately forming a substantially continuous layer between objects 1 and 2 of thickness 11, width 6, and depth 9.” (Figure 1 and accompanying text). Therefore modifying Davidson to use a calculation that accounts for the flow and change in area of coverage would have been obvious to one of ordinary skill in the art at the time of the invention
Claim 15-20: Examiner maintains the position as set forth above as such features are explicitly taught by the prior art. However, and at the very least, Davidson is specifically concerned with optimizing the pattern of the TIM to achieve various benefits, including minimize material (reduce excess material usage, i.e. waste), minimize time, adjust pressing force, coverage, etc. and optimizing the process using modeling to achieve the “substantially continuous layer between objects 1 and 2 of thickness 11, width 6, and depth 9.”, see Figure 1 and accompanying text). Therefore taking the references collectively it would have been obvious to have modified Davidson to balance the various factors, including those as claimed, to achieve the desire gap to provide the TIM with the desired properties.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID P TUROCY whose telephone number is (571)272-2940. The examiner can normally be reached Mon, Tues, Thurs, and Friday, 7:00 a.m. to 5:30 p.m.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gordon Baldwin can be reached at 571-272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID P TUROCY/ Primary Examiner, Art Unit 1718
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