Prosecution Insights
Last updated: October 02, 2026
Application No. 18/742,940

ELECTRONIC SYSTEM ASSEMBLY

Final Rejection §102
Filed
Jun 13, 2024
Priority
Jun 13, 2023 — provisional 63/472,810
Examiner
JALALI, AMIR A.
Art Unit
2835
Tech Center
2800 — Semiconductors & Electrical Systems
Assignee
Epirus Inc.
OA Round
2 (Final)
78%
Grant Probability
Favorable
3-4
OA Rounds
0m
Est. Remaining
99%
With Interview

Examiner Intelligence

Grants 78% — above average
78%
Career Allowance Rate
355 granted / 452 resolved
+10.5% vs TC avg
Strong +22% interview lift
Without
With
+22.3%
Interview Lift
resolved cases with interview
Typical timeline
2y 2m
Avg Prosecution
23 currently pending
Career history
467
Total Applications
across all art units

Statute-Specific Performance

§101
0.2%
-39.8% vs TC avg
§103
60.1%
+20.1% vs TC avg
§102
26.8%
-13.2% vs TC avg
§112
10.7%
-29.3% vs TC avg
Black line = Tech Center average estimate • Based on career data from 452 resolved cases

Office Action

§102
Email Communication Applicant is encouraged to authorize the Examiner to communicate via email by filing form PTO/SB/439 either via USPS, Central Fax, or EFS-Web. See MPEP 502.01, 502.02, 502.03. DETAILED ACTION Response to Amendment Applicant’s amendment to the specification and drawings has overcome each and every specification and drawing objection previously set forth in non-final office action dated 04/08/2026, therefore, the objections have been withdrawn. The Applicant originally submitted Claims 1-4 in the application. In the present response, the Applicant amended Claims 1-4, added new Claims 5-8. Accordingly, Claims 1-8 are currently pending in the application. Response to Arguments Applicant’s Arguments/Remarks filled 07/07/2026, with respect to rejection of Claim 1 under 35 U.S.C. § 102(a)(1) have been fully considered, however not persuasive. Applicant argues that cited US 7,564,685 to Clidaras et al does disclose every element of the newly amended claims. In support of this argument, the Applicant reasons that Clidaras does not disclose “a first heat sink comprising a first body, the first body comprising a first side and a second side opposite to the first side”, “a second subassembly separate from the first subassembly”, “a second heat sink comprising a second body, the second body comprising a third side and a fourth side opposite to the third side” and “a plurality of connecting means securing the first subassembly to the second subassembly such that the second side of the first body is in direct contact with the fourth side of the second body” as Clidaras discloses the heat sink 114 includes three layers of material welded, adhered, clamped, or otherwise joined together. The first layer 114a has been milled to fit the landscape of the motherboard assembly 112a. For example, when a component on the motherboard 112a extends out, the heat sink 114 has been milled inward to make room for the component. As shown, the first layer 114a contacts a second layer 114b, which in turn contacts a third layer 114c. Examiner respectfully disagrees. A heat sink body may comprise of several parts or layers. The term “body” does not imply that the body is made of single piece of material without any other parts. For example a body of an automobile has several layers and parts joined together by a connecting means such as welding. If Applicant intending to Claim a singular unitarian body, them Applicant is encouraged to amend the Claims accordingly. In rejection of Claim 1, Examiner is citing body of heat sink 114a as first heat sink body, and body of heat sinks 114b and 114c together as a second heat sink body. Accordingly, Examiner submits that following MPEP 2111, in a broadest reasonable interpretation in light of the specification, Clidaras teaches or suggest limitations newly amended Claim. Claim Interpretation The following is a quotation of 35 U.S.C. 112(f): (f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. Use of the word “means” (or “step for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. 112(f). The presumption that 35 U.S.C. 112(f) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function. Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. 112(f). The presumption that 35 U.S.C. 112(f) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function. Claim elements in this application that use the word “means” or “step” are presumed to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office Action. Similarly, claim elements that do not use the word “means” or “step” are presumed not to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action. As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) (bold for emphasis): (A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function; (B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and (C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function. Claim limitations “connecting means” in Claim 1 have been interpreted under 35 U.S.C. 112(f), because they use a generic placeholder “means” coupled with functional language “connecting” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a sufficient structural modifier. Since the claim limitation invokes 35 U.S.C. 112(f), Claim 1 has been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof. The Examiner respectfully notes that while the entirety of the specification is relevant, a review of the specification shows that the following appears to be most pertinent to the corresponding structure described in the specification for the 35 U.S.C. 112(f) limitation: “connecting means” corresponding structure, “screws”, “adhesive”, “weld joints”, “solder joints”, “pins”, or “rivets”. If Applicant does not intend to have the claim limitation treated under 35 U.S.C. 112(f), Applicant may amend the claim so that it will clearly not invoke 35 U.S.C. 112(f), or present a sufficient showing that the claim recites sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f). For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011). Claim Rejections - 35 USC § 102 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 1-8 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Clidaras et al (US 7,564,685). Regarding Claim 1, Clidaras ( In Figs 1, 3) discloses an assembly (110) comprising: a first subassembly (112a/114a) comprising: a first heat sink (114a) comprising, a first body (body of 114a), the first body (body of 114a) comprising a first side and a second side opposite to the first side (Fig 1) ; and a first circuit board (112a) mounted to the first side of the first body (body of 114a), the first circuit board (112a) comprising a first set of electronic components (130, Col 3, II. 41-44), (Fig 1); a second subassembly (112b/114b/114c) separate from the first subassembly (112a/114a), (Fig 1), the second subassembly (112b/114b/114c) comprising: a second heat sink (114b/114c) comprising a second body (body of 114b/114c), the second body (body of 114b/114c) comprising a third side and a fourth side opposite to the third side (Fig 1), and a second circuit board (112b) mounted to the third side of the second body (body of 114b/114c), (Fig 1), the second circuit board (112b) including a second set of electronic components (130, Col 3, II. 41-44), (Fig 1); and a plurality of connecting means (clamps, Col 6, II. 56-60) securing the first subassembly (112a/114a) to the second subassembly (112b/114b/114c) such that the second side of the first body (body of 114a) is in direct contact with the fourth side of the second body (body of 114b/114c), (Fig 1). Regarding Claim 2, Clidaras discloses the limitations of Claim 1, however Clidaras ( In Figs 1, 3) further discloses wherein the first heat sink (114a) comprises a first recess (122) in the second side of the first body (body of 114a), (Fig 1), and wherein the second heat sink (114b/114c) comprises a second recess (122) in the fourth side of the second body (body of 114b/114c), (Fig 1), the first recess (122) and the second recess (122) defining a cavity (122) when the first subassembly (112a/114a) is secured to the second subassembly (112b/114b/114c), (Fig 1). Regarding Claim 3, Clidaras discloses the limitations of Claim 2, however Clidaras ( In Figs 1, 3) further discloses wherein the assembly (110) further comprising a phase change material (water, Col 3, II. 49-53) disposed in the cavity (122), (Fig 1). Regarding Claim 4, Clidaras discloses the limitations of Claim 2, however Clidaras ( In Figs 1, 3) further discloses wherein the cavity (122) comprises a channel (122) extending from the cavity (122) to an edge of the first subassembly (112a/114a) and an edge of the second subassembly (112b/114b/114c), (Fig 1). Regarding Claim 5, Clidaras ( In Figs 1, 3) an assembly (110) comprising: a first subassembly (112a/114a) comprising: a first heat sink (114a) comprising a first body (body of 114a), the first body (body of 114a) comprising a first side and a second side opposite to the first side (Fig 1); and a first circuit board (112a) mounted to the first side of the first body (body of 114a), (Fig 1), the first circuit board (112a) comprising a first set of electronic components (130, Col 3, II. 41-44), (Fig 1); a second subassembly (112b/114b/114c) separate from the first subassembly (112a/114a), (Fig 1), the second subassembly (112b/114b/114c) comprising: a second heat sink (114b/114c) comprising a second body (body of 114b/114c), the second body (body of 114b/114c) comprising a third side and a fourth side opposite to the third side (Fig 1); and a second circuit board (112b) mounted to the third side of the second body (body of 114b/114c), (Fig 1), the second circuit board (112b) including a second set of electronic components (130, Col 3, II. 41-44), (Fig 1); and a plurality of connectors (clamps, Col 6, II. 56-60) securing the first subassembly (112a/114a) to the second subassembly (112b/114b/114c) such that the second side of the first body (body of 112a/114a) is in direct contact with the fourth side of the second body (body of 114b/114c), (Fig 1). Regarding Claim 6, Clidaras discloses the limitations of Claim 5, however Clidaras ( In Figs 1, 3) further discloses wherein the first heat sink (114a) comprises a first recess (122) in the second side of the first body (body of 114a), (Fig 1), and wherein the second heat sink (114b/114c) comprises a second recess (122) in the fourth side of the second body (body of 114b/114c), (Fig 1), the first recess (122) and the second recess (122) defining a cavity (122) when the first subassembly (112a/114a) is secured to the second subassembly (112b/114b/114c), (Fig 1). Regarding Claim 7, Clidaras discloses the limitations of Claim 6, however Clidaras ( In Figs 1, 3) further discloses wherein the assembly (110) further comprising a phase change material (water, Col 3, II. 49-53) disposed in the cavity (122), (Fig 1). Regarding Claim 8, Clidaras discloses the limitations of Claim 6, however Clidaras ( In Figs 1, 3) further discloses wherein the cavity (122) comprises a channel (122) extending from the cavity (122) to an edge of the first subassembly (112a/114a) and an edge of the second subassembly (112b/114b/114c), (Fig 1). 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 AMIR JALALI whose telephone number is (303)297-4308. The examiner can normally be reached on Monday - Friday 8:30am - 5:00pm, Mountain Time. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jayprakash Gandhi can be reached on 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 an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /AMIR A JALALI/Primary Examiner, Art Unit 2841
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Prosecution Timeline

Jun 13, 2024
Application Filed
Apr 08, 2026
Non-Final Rejection mailed — §102
Jul 07, 2026
Response Filed
Aug 19, 2026
Final Rejection mailed — §102 (current)

Precedent Cases

Applications granted by this same examiner with similar technology

Patent 12750978
PACKAGE STRUCTURE
2y 10m to grant Granted Sep 29, 2026
Patent 12750975
PHASE CHANGE HEAT SINK TRANSPIRATION COOLING
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Patent 12750988
CONVERTER AND METHOD OF OPERATING A CONVERTER
2y 4m to grant Granted Sep 29, 2026
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INTRA-DRAWER HEAT EXCHANGER
2y 5m to grant Granted Sep 22, 2026
Patent 12740439
METAL-CERAMIC BONDED SUBSTRATE AND MANUFACTURING METHOD THEREOF
2y 7m to grant Granted Sep 15, 2026
Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

3-4
Expected OA Rounds
78%
Grant Probability
99%
With Interview (+22.3%)
2y 2m (~0m remaining)
Median Time to Grant
Moderate
PTA Risk
Based on 452 resolved cases by this examiner. Grant probability derived from career allowance rate.

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