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 .
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.
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 13-17, 19, and 20, 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.
Claims 13-16, and 19 recite the limitations “component(s)”, which lack proper antecedent basis, since the “electrical or electronic component(s)” have been previously positively set forth in claims 11 and 12.
Furthermore, claim 15 recites the limitation “the opening” which lacks proper antecedent basis, since the parent claim 11 positively sets forth “at least one opening”.
The Office reminds Applicant that the uniform terminology should be used throughout the claims. The claimed terminology should be consistent with the terminology of the specification and should follow the nomenclature of the specification. The terms and phrases used in claims must have a clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o).
Furthermore, claim 13 recites an ambiguous and unclear clause which renders the claim indefinite –---- “the plurality of components…have flush component surfaces”. The clause is indefinite because it fails to specify the reference with respect to which the surfaces are “flush”. The term “flush” is a relative term which requires a point of comparison (e.g., flush with one another, flush with a reference surface, etc.).
Furthermore, claim 17 recites an ungrammatical clause which renders the claim indefinite – “wherein the coil is configured to act as a current-compensated choke as an EMC filter choke [sic]”.
Furthermore, claim 20 recites the limitation “at least one component surface”. There is insufficient antecedent basis for this limitation in the claim, since this limitations has not been previously properly set forth.
The remaining dependent claims have been also rejected since they inherit problems of the rejected parent claims.
Appropriate corrections are required. Applicant’s cooperation is hereby requested in reviewing the claims and correcting all remaining informalities present in the claims, but not made of record above.
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.
Claims 11-13, 16, and 18-20, as best understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2018/ 0079377 to Maeda et al. (hereafter “Maeda”).
Regarding claim 11, Meda discloses (Figs. 1-3) an electronic device (1) comprising: at least one printed circuit board (21, 23); and at least one electrical or electronic component (41), wherein the printed circuit board comprises: an assembly side (21B) and an opposite soldering side (26A); and at least one opening (24A), which corresponds to the at least one component (41) and is continuous in a thickness direction of the printed circuit board, wherein the at least one component (41) adjoins the opening (24A) or protrudes therein, so that the component is exposed from the soldering side (26A) and can be cooled by a cooling device (51) facing toward the soldering side (26A) (the heat is transferred through the bus bars (31) (par. [0004]) to the lower housing (51) which would inherently function as a cooling device by dissipating heat to the environment).
Examiner’s Note: the open-ended limitations “can be cooled by a cooling device facing toward the soldering side” constitute an open-ended clause, which just suggests or makes optional. A language that suggests or makes optional but does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation (MPEP 2103(I)(C ) and MPEP 2111.04). It has been held that the open-ended recitations stating that an element is capable to perform a function are not the positive limitations but only require the ability to so perform. They do not constitute a limitation in any patentable sense. See In re Hutchison, 69 USPQ 138.
Therefore, though said limitations have been met by Maeda as explained above, they do not have any patentable weight.
Regarding claim 12, Maeda discloses that the printed circuit board (21, 23) comprises a plurality of electrical or electronic components (41, 41A, 42) ) and respective assigned openings (24A, 24B), wherein at least one electrical or electronic component is arranged in each of the openings such that it is exposed from the soldering side (26A) and can also be cooled by the cooling device (51) from the soldering side (the heat is transferred through the bus bars (31) (par. [0004]) to the lower housing (51), which would inherently function as a cooling device by dissipating heat to the environment).
Examiner’s Note: the open-ended limitations “can also be cooled by a cooling device facing toward the soldering side” constitute an open-ended clause, which just suggests or makes optional. A language that suggests or makes optional but does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation (MPEP 2103(I)(C ) and MPEP 2111.04). It has been held that the open-ended recitations stating that an element is capable to perform a function are not the positive limitations but only require the ability to so perform. They do not constitute a limitation in any patentable sense. See In re Hutchison, 69 USPQ 138.
Therefore, though said limitations have been met by Maeda as explained above, they do not have any patentable weight.
Regarding claim 13, as best understood, Maeda discloses that the plurality of components (41, 41A, 42) arranged in the respective openings (24A, 24B) have flush component surfaces pointing toward the soldering side (26A), which face toward the cooling device (51), (Fig. 3).
Regarding claim, 16, as best understood, Maeda discloses that at least one component (41, 41A, 42) arranged in the opening (24A, 24B) comprises a coil or a semiconductor component (par. [0020]).
Regarding claim 18, Maeda discloses that the cooling device (51) has at least one planar cooling surface arranged parallel to the soldering side (26A) of the printed circuit board (21, 23), (Fig. 3).
Regarding claim 19, Maeda discloses (Figs. 1-3) the cooling surface of the cooling device (51) is in heat-conductive contact with multiple components (41, 42, 41A) of the electronic device (1) that are arranged in respective openings (24A, 24B) of the printed circuit board (21, 23).
Regarding claim 20, Maeda discloses (Figs. 1-3), a heat conduction pad and/or a heat conduction medium (31) is arranged between the cooling surface and at least one component surface of the at least one component (41) arranged in the opening (24A) of the printed circuit board (21, 23).
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 17, as best understood, is rejected under 35 U.S.C. 103 as being unpatentable over Maeda in view of US 2003/0179594 to Bruckmann et al. (hereafter “Bruckmann).
Regarding claim 17, Maeda does not disclose the at least one component that is a coil that is configured to act as a current-compensated choke as an EMC filter choke.
Bruckmann teaches an electric interference suppression device (Fig. 3) comprising an EMC filter having a current-compensated choke (18) for achieving enhanced suppression of the asymmetrical interference currents (pars. [0029], [0032]).
It would have been obvious to a person of the ordinary skill in related arts before the effective filing dated of the claimed invention to have provided in the electronic device of Maeda at least one component that is a coil that is configured to act as a current-compensated choke/EMC filter choke, as taught by Bruckmann, in order to predictably achieve effective EMI suppression, and specifically, in order to enhance suppression of the asymmetrical interference currents (see Bruckmann, pars. [0029], [0032]). 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).
Claim Rejections - 35 USC § 102/103
Claims 14 and 15, as best understood, are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Maeda taken alone.
Regarding claims 14 and 15, Maeda discloses that the at least one component (41) is solely coupled with the at least one conductor track (23) of the at least one printed circuit board (21, 23) by means of bonds (see par. [0030] – “the semiconductor elements 41 each include a plurality of terminals. At least one of the terminals (ground terminal) is connected to the conductive path 23 disposed on the mounting surface 21B”).
Therefore, the soldered bonds are implicitly disclosed. Also, the limitation “soldered” (claim 14) and “wave soldering” (claim 15) are method of making limitations which are not germane to the issue of patentability of the device itself. Even though the claims are limited by and defined by the recited process, the determination of patentability of the product is based on the product itself, and does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). Therefore, these method limitations have no limiting effect of the claimed structure of the device/apparatus, and therefore, lacking any patentable weight.
Alternatively, the Official Notice is taken of the facts outside of the current record that wave soldering has been notoriously known and widely used in related arts before the effective filing date of the claimed invention as a fast and reliable method for interconnection of electronic components with conductor tracks of printed circuit boards by means of soldered bonds during mass production thereof.
Therefore, it would have been obvious to a person of the ordinary skill in related arts before the effective filing dated of the claimed invention to have utilized wave soldering to interconnect, by means of soldering bonds, the at least one electronic component with the at least one track of the at least one circuit board in Maeda, in order to predictably achieve increased assembly throughput and high reliability electrical connections during mass production of the electronic devices. 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).
Conclusion
The additional prior art made of record and not relied upon is considered pertinent to Applicant's disclosure, because of the teachings of various cooling arrangements for PCB mounted electronic devices. Furthermore, the Office directs the Applicant’s attention that
US 10263405 (see Figs. 1-3) and US 10038315 (see Figs. 1, 8, 9, 12) could have been also used for statutory rejection of the at least independent claim 11.
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.
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, 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.
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.
/ANATOLY VORTMAN/Primary Examiner, Art Unit 2835
Prosecution Insights