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 7/7/2026 to the non-final Office action of 04/08/2026 is acknowledged. The Office action on currently pending claims 11-21 follows.
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 and 16 is 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 13, the clause “surfaces flushing [sic] with one another” is ungrammatical and renders the scope of the claim not clearly defined. It appears that the correct clause should be: “surfaces that are flush with one another”.
Claim 16 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).
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, 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 at least one 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 electrical or electronic component (41) and is continuous in a thickness direction of the at least one printed circuit board, wherein the at least one electrical or electronic component (41) adjoins the at least one opening (24A) or protrudes therein, such that a component section (41) of the at least one electrical or electronic component (41) is arranged on the soldering side (26A) and has a component surface that is exposed from the soldering side (26A) and faces toward a cooling device (51) for thermal coupling therewith (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, see annotated Fig. 3 below).
Examiner’s Note: the open-ended limitations “for thermal coupling therewith” constitute an open-ended clause, which just suggests or makes optional. It’s not clear whether the component surface that is exposed from the soldering side is actually thermally coupled with the cooling device or not. 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.
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Regarding claim 12, Maeda discloses that the at least one 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 is thermally coupled with 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, see annotated Fig. 3 above).
Regarding claim 13, as best understood, Maeda discloses that the plurality of electrical or electronic components (41, 41A) arranged in the respective openings (24A, 24B) have flush component surfaces flushing [sic] with one another and pointing toward the soldering side (26A), which face toward the cooling device (51), (Fig. 3).
Regarding claim, 16, Maeda discloses that the at least one electrical or electronic 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 at least one 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 electrical or electronic components (41, 42, 41A) of the electronic device (1) that are arranged in respective openings (24A, 24B) of the at least one printed circuit board (21, 23).
Regarding claim 20, Maeda discloses (Figs. 1-3), wherein 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 electrical or electronic component (41) arranged in the opening (24A) of the at least one 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.
Claims 17 and 21, are 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 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 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 electrical or electronic 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 thereof1.
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).
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive. Applicant contends that, allegedly, “Maeda's component insertion holes 24A are for disposing components with terminals connected to bus bars for electrical purposes, not for exposing component surfaces for thermal coupling with a cooling device. As Maeda describes, "[t]he component insertion holes 24A, which constitute part of these holes, are holes for disposing the semiconductor elements 41, and are sized such that one semiconductor element 41 can be disposed inside one component insertion hole 24A." Maeda, paragraph [0023]. In contrast, claim 11 as amended requires a component section to be "arranged on the soldering side."”
In response the Office would like to point out that the purpose of the openings (24) of Maeda is irrelevant. What’s important is the fact that the structure of the device recited in claim 11 reads on Maeda as explained in the body of the rejection above. Furter, the component section of the semiconductor element (41) is arranged on the soldering side (26A) of the circuit board (21) in Maeda exactly in the same fashion as the component section (19b) of the instant invention is arranged on the soldering side (16) of the circuit board (12) (see Fig. 2). If Applicant believes that this is not the case in Maeda, then, following Applicant’s own logic, it should also not be the case with the component section (19b) of the instant application.
Furthermore, Applicant went on by stating that, allegedly, “Maeda teaches away from the features highlighted in bold above. Maeda's purpose is to prevent heat transfer through bus bars, not to facilitate thermal coupling between component surfaces and a cooling device. As Maeda explains, "the generated heat may be transferred through a bus bar and a copper foil serving as the conductive materials, as well as a control circuit board to other components that are likely to be influenced by heat, resulting in a failure in the other components." Maeda, paragraph [0004]. This heat transfer is the problem that Maeda seeks to solve, not a cooling mechanism.”
On the contrary, there is no teaching away in Maeda in relation to the vertical heat transfer from the components (41) via busbars (31) to the housing (51) (i.e., see vertical heat flux arrow on the annotated Fig. 3 above). What Maeda is attempting to prevent is a horizontal heat transfer from said components (41) to the electrolytic capacitor (43). In order to do so Maeda presents solution that is specifically designed to “inhibit the heat generated from the semiconductor element 41, which is a heat generating component, from being transferred through the bus bars 31 to the low heat resistant electrolytic capacitor 43 or the IC 44, which are low heat resistance components.” (Maeda, par. [0034]). To prevent this horizontal heat transfer Maeda implements slits (27A, 27B, and 27C) that are disposed in the bus bar non-arrangement regions (25A, 25B, and 25C) (Maeda, par. [0031]). These slits (27A, 27B, and 27C) do absolutely nothing to impede the aforementioned vertical heat transfer from the components (41) via busbars (31) to the housing (51) (i.e., see vertical heat flux arrow on the annotated Fig. 3 above). Accordingly, contrary to the Applicant’s position, there is no alleged teaching away in Maeda.
Furthermore, Applicant went on by stating that, allegedly, “Maeda's lower case 51 is merely a housing enclosure, not a cooling device for thermal coupling with component surfaces. Maeda describes that "[t]he case 50 includes a dish-shaped lower case 51 that is overlapped with the circuit structure 20, and a box-shaped upper case 52 that is assembled to the lower case 51 SO as to cover the circuit structure 20." Maeda, paragraph [0019]. There is no teaching that the lower case 51 is configured for thermal coupling with any component surface exposed from the soldering side.”
In response the Office would like to remind the Applicant that "[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences (emphasis added) which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968). The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. (MPEP 2112). “The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.” In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995) (affirmed a 35 U.S.C. 103 rejection based in part on inherent disclosure in one of the references). See also In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983). The disclosure of the structure (or material or acts) may be implicit or inherent in the specification if it would have been clear to those skilled in the art what structure (or material or acts) corresponds to the means (or step)-plus-function claim limitation. See Atmel Corp. v. Information Storage Devices, Inc., at 1380, 53 USPQ2d at 1229 (Fed. Cir. 1999); In re Dossel, 115 F.3d 942, 946-47, 42 USPQ2d 1881, 1885 (Fed. Cir. 1997).
In the instant case, the lower case (51) of Maeda would inherently act as the cooling device, i.e., the heat is transferred from the components (41) and through the bus bars (31) to the lower case (51) which would inherently function as the cooling device by dissipating heat to the environment (see annotated Fig. 3 above).
In view of the above the rejection is hereby maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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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/
07/28/2026
1 Examiner’s Note: Since Applicant has failed to seasonably traverse the aforementioned well-known statement, the object of said well-known statement is taken to be admitted prior art. See In re Chevenard, 139 F.2d71, 60 USPQ 239 (CCPA 1943), ("If Applicant does not seasonably traverse the well-known statement during examination, then the object of the well-known statement is taken to be admitted prior art"). MPEP 2144.03 (C).
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