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
Applicant's election with traverse of Species I (Fig. 3), Subspecies A, claims 1-2, 9-12, 14-15, 17-18, and 20 in the reply filed on 6/2/2026 is acknowledged. The traversal is on the ground(s) that, allegedly, “at least the Species I and Species IV shall be classified into the same species, since the embodiments shown described in Fig. 6 is a further configuration of the embodiments shown in Fig. 3, they are in an inclusion relation rather than a parallel relation, and thus shall not be considered as mutually exclusive. Similarly, Species III and Species V shall be classified into the same species. Applicant made an election of Species I which should also capable of encompassing claims 9-11.”
This is not found persuasive, since the restricted Species have different design as shown on the relevant species figures and as it was clearly explained in the Election/Restriction requirement, i.e., Fig. 3 depicting Species I has clearly different heat pipe configuration as compared to the one depicted on Fig. 6 depicting Species IV. The same goes in relation to Species III and V and to the subspecies.
Furthermore, it was clearly stated in the Election/Restriction requirement: “Should applicant traverse on the ground that the species/subspecies or groupings of patentably indistinct species/subspecies from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them to be obvious variants or clearly admit on the record that this is the case.”
However, Applicant has failed to do so. Accordingly, the Species/Subspecies remain to be not obvious variants of each other based on the current record.
Accordingly, the requirement is still deemed proper and is therefore made FINAL.
Furthermore, the Office would like to direct the Applicant’s attention to the fact that claims 9-11 (indicated as elected) do not read on the elected Species/Subspecies, since the parent claim 9 recites the limitations: “wherein the extension portion comprises at least a first extension section and a second extension section, the second extension section is located on a side of the first extension section away from the main body portion and is in communication with the main body portion through the first extension section, and an angle ß is formed between the first extension section and the second extension section” (emphasis added).
The aforementioned limitations read on Species IV (Fig. 6), as the elected Species I (Fig. 3) does not have any “first extension section and a second extension section”, wherein “an angle ß is formed between the first extension section and the second extension section”.
Accordingly, claims 9-11 are withdrawn from further consideration on the merits along with the remaining non-elected claims 3-8, 13, 16, and 19 as drawn to the non-elected Species/Subspecies.
The Office action on the elected claims 1, 2, 12, 14, 15, 17, 18, and 20 follows.
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 1, 2, 12, 14, 15, 17, 18, and 20, are rejected under 35 U.S.C. 103 as being unpatentable over US 5, 506, 032 to Rowe (cited on IDS) taken alone.
Regarding claim 1, Rowe discloses (Figs. 2-5) an energy storage inverter, comprising:
a substrate (12) provided with an electronic element (60) on one side thereof and provided with a heat sink (14, 16) on the other side thereof; and at least one heat pipe set (20, 30, 40) arranged on one side of the heat sink close to the substrate and connected to the heat sink, wherein the heat pipe set comprises at least one first heat pipe (26), the first heat pipe comprises a main body portion and an extension portion (bent portion(s), Fig. 2), and along a length direction of the main body portion, the extension portion is located on at least one side of the main body portion and is in communication with the main body portion; wherein an angle α is formed between the extension portion and the main body portion (Fig. 2).
Examiner’s Note: regarding the preamble limitation “An energy storage inverter”, the limitation is directed to the intended use of the device and inasmuch as it imparts any structure, and absent any evidence to the contrary, the device of Rowe is capable of acting in such a manner. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. See Ex parte Masham, 2 USPQ2d 1647 (1987).
Rowe does not specifically disclose that a ratio of a length of the main body portion to a length of the extension portion ranges from 4.3 to 4.5.
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 desired optimal dimensions (i.e., lengths) of the main body portion and of the extension portion of said at least one first heat pipe of Rowe, including so as to satisfy the aforementioned claimed condition (i.e., the ratio of the length of the main body portion to the length of the extension portion ranges from 4.3 to 4.5), in order to achieve desired thermal (e.g., the rate of the heat dissipation, desired cooling efficiency, etc.) and mechanical (e.g., the structural stability, overall dimensions, space utilization, weight, structural rigidity, etc.) characteristics of the device, while not exceeding targeted production costs thereof, 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, the rational that a particular shape is a design choice may be found in legal precedent. See In re Dailey, 357 F.2d669, 149 USPQ 47 (CCPA 1966).
Regarding claim 2, Rowe discloses that the first heat pipe (26) comprises one extension portion, along the length direction of the main body portion, the extension portion is located at one end of the main body portion (Fig. 2), but does not specifically disclose that the angle α between the main body portion and the extension portion ranges from 130° to 140°.
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 desired optimal angle α range between the main body portion and the extension portion in Rowe, including as claimed, in order to achieve desired thermal (e.g., the rate of the heat dissipation, desired cooling efficiency, etc.) and mechanical (e.g., the structural stability, overall dimensions, space utilization, weight, structural rigidity, etc.) characteristics of the device, while not exceeding targeted production costs thereof, 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, the rational that a particular shape is a design choice may be found in legal precedent. See In re Dailey, 357 F.2d669, 149 USPQ 47 (CCPA 1966).
Regarding claim 12, Rowe discloses that the heat pipe set (20, 30, 40) comprises a plurality of first heat pipes (26, 34, 42); and along a length direction or a width direction of the heat sink, the plurality of first heat pipes are arranged at intervals (Fig. 2).
Regarding claims 14 and 15, Rowe discloses that the heat pipe set further comprises at least one second heat pipe (22, 24, 32), an extension direction of the second heat pipe is the same as an extension direction of the main body portion, and a length of the second heat pipe is less than a length of the first heat pipe (Fig. 2).
Regarding claim 15 Rowe does not explicitly disclose that a ratio of the length of the second heat pipe to the length of the first heat pipe ranges from 0.81 to 0.84.
Regarding claim 15, and alternatively regarding claim 14, 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 desired optimal dimensions (i.e., lengths) of the first and second heat pipes of Rowe, so the ratio of the length of the second heat pipe to the length of the first heat pipe ranges from 0.81 to 0.84, as claimed, in order to achieve desired thermal (e.g., the rate of the heat dissipation, desired cooling efficiency, etc.) and mechanical (e.g., the structural stability, overall dimensions, space utilization, weight, structural rigidity, etc.) characteristics of the device, while not exceeding targeted production costs thereof, since it has been held that 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, the rational that a particular shape is a design choice may be found in legal precedent. See In re Dailey, 357 F.2d669, 149 USPQ 47 (CCPA 1966). Also, 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.
Regarding claim 17, Rowe discloses that in the heat pipe set (20, 30), the first heat pipe (26, 34) and the second heat pipe (22, 24, 32) are alternately arranged along the length direction or the width direction of the heat sink (14, 16), (Fig. 2).
Regarding claim 18, Rowe discloses a plurality of heat pipe sets (20, 30, 40); and
along the length direction or the width direction of the heat sink (14, 16), the plurality of heat pipe sets are arranged at intervals (Fig. 2).
Regarding claim 20, Rowe discloses that the heat sink (14, 16) comprises a heat dissipation plate (16) and a heat dissipation fin (14), the heat pipe set (20, 30, 40) is arranged on the heat dissipation plate, and the heat dissipation fin is located on a side of the heat dissipation plate away from the heat pipe set and is connected to the heat dissipation plate (Figs. 4, 5).
Claims 1, 2, 12, and 20, are rejected under 35 U.S.C. 103 as being unpatentable over US 7, 493, 939 to Xia et al. (hereafter “Xia”) taken alone.
Regarding claim 1, Xia discloses (Figs. 1-4) an energy storage inverter, comprising:
a substrate (10) provided with an electronic element (100) on one side thereof and provided with a heat sink (30) on the other side thereof; and at least one heat pipe set (22, 24) arranged on one side of the heat sink close to the substrate and connected to the heat sink, wherein the heat pipe set comprises at least one first heat pipe (22, 24), the first heat pipe comprises a main body portion and an extension portion (bent portion(s), Figs. 1, 2), and along a length direction of the main body portion, the extension portion is located on at least one side of the main body portion and is in communication with the main body portion; wherein an angle α is formed between the extension portion and the main body portion (Figs. 1, 2).
Examiner’s Note: regarding the preamble limitation “An energy storage inverter”, the limitation is directed to the intended use of the device and inasmuch as it imparts any structure, and absent any evidence to the contrary, the device of Xia is capable of acting in such a manner. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. See Ex parte Masham, 2 USPQ2d 1647 (1987).
Xia does not specifically disclose that a ratio of a length of the main body portion to a length of the extension portion ranges from 4.3 to 4.5.
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 desired optimal dimensions (i.e., lengths) of the main body portion and of the extension portion of said at least one first heat pipe of Xia, including so as to satisfy the aforementioned claimed condition (i.e., the ratio of the length of the main body portion to the length of the extension portion ranges from 4.3 to 4.5), in order to achieve desired thermal (e.g., the rate of the heat dissipation, desired cooling efficiency, etc.) and mechanical (e.g., the structural stability, overall dimensions, space utilization, weight, structural rigidity, etc.) characteristics of the device, while not exceeding targeted production costs thereof, 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, the rational that a particular shape is a design choice may be found in legal precedent. See In re Dailey, 357 F.2d669, 149 USPQ 47 (CCPA 1966).
Regarding claim 2, Xia discloses that the first heat pipe (22, 24) comprises one extension portion, along the length direction of the main body portion, the extension portion is located at one end of the main body portion (Figs. 1, 2), but does not specifically disclose that the angle α between the main body portion and the extension portion ranges from 130° to 140°.
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 desired optimal angle α range between the main body portion and the extension portion in Xia, including as claimed, in order to achieve desired thermal (e.g., the rate of the heat dissipation, desired cooling efficiency, etc.) and mechanical (e.g., the structural stability, overall dimensions, space utilization, weight, structural rigidity, etc.) characteristics of the device, while not exceeding targeted production costs thereof, 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, the rational that a particular shape is a design choice may be found in legal precedent. See In re Dailey, 357 F.2d669, 149 USPQ 47 (CCPA 1966).
Regarding claim 12, Xia discloses that the heat pipe set (22, 24) comprises a plurality of first heat pipes (22, 24); and along a length direction or a width direction of the heat sink (30, 40), the plurality of first heat pipes are arranged at intervals (Figs. 1, 2).
Regarding claim 20, Xia discloses that the heat sink (40) comprises a heat dissipation plate (10) and a heat dissipation fin (42), the heat pipe set (22, 24) is arranged on the heat dissipation plate, and the heat dissipation fin is located on a side of the heat dissipation plate away from the heat pipe set and is connected to the heat dissipation plate (Fig. 1).
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 electronic devices, wherein said cooling arrangements employ heat sinks and heat pipes.
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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/Anatoly Vortman/
Primary Examiner
Art Unit 2841
/AV/6/23/2026
Prosecution Insights