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 III, Subspecies A, claims 1-19 in the reply filed on 7/20/2026 is acknowledged. The traversal is on the ground(s) that, all Species, allegedly, “include multiple cooling cells in which the cooling elements are offset from the heat-generating both horizontally and vertically. Thus, Applicant respectfully submits that there is no undue search and/or examination burden for at least Species III, V, VI, and VII. Accordingly, Applicant respectfully requests that the restriction requirement at least with respect to these species be withdrawn”.
This is not found persuasive because the restricted Species / Subspecies have substantial differences as in details explained in the outstanding Requirement. Further, it was clearly stated in the Requirement that: “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 restricted Species / Subspecies remain to be not obvious variants of each other based on the current record.
In view of the above, the Requirement is still deemed proper and is therefore made FINAL. The Office action on elected claims 1-19 follows.
Specification
The disclosure is objected to because of the following informalities: the same reference number “404” is recited in reference to the “substrate” and “components” (par. [0063]).
Appropriate correction is required. The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is hereby requested in correcting of any remaining errors and informalities of which Applicant may become aware in the specification.
Claim Objections
Claim 1 is objected to because of the following informalities: it appears that in line 3 of the claim the clause “with the” is omitted between “communication” and “heat spreader”. Appropriate correction is required. Applicant’s cooperation is hereby requested in correcting of any remaining errors and informalities of which Applicant may become aware in the claims.
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 1-14, 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Independent claims 1 and 8 recite negative limitations: “while not directing the fluid directly at the heat-generating structure”.
Any negative limitation or exclusionary proviso must have basis in the original disclosure. If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims. See In re Johnson, 558 F.2d 1008, 1019, 194 USPQ 187, 196 (CCPA 1977) ("[the] specification, having described the whole, necessarily described the part remaining."). See also Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983), aff ’d mem., 738 F.2d 453 (Fed. Cir. 1984).
In the instant case, the original specification does not recite any alternatives nor present any relevant discussion (i.e., “directing” vs. “not directing”, etc.). As such, the negative limitations do not have any basis in the original disclosure. MPEP §2173.05(i), (“Any claim containing a negative limitation which does not have basis in the original disclosure should be rejected under 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement”).
All dependent claims have been also rejected by virtue of their dependency from the rejected independent claims 1 and 8.
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 1-14, 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.
Independent claims 1 and 8 recite negative limitations: “while not directing the fluid directly at the heat-generating structure”.
The claims attempt to define the invention in terms of what it was not, rather than pointing out the invention, i.e., it attempts to claim the invention by excluding what the inventors did not invent rather than distinctly and particularly pointing out what they did invent. See In re Schechter, 205 F.2d 185, 98 USPQ 144 (CCPA 1953).
All dependent claims have been also rejected by virtue of their dependency from the rejected independent claims 1 and 8.
Furthermore, regarding claims 7 and 14, the claims recite an ambiguous and unclear clause: “an acoustic resonance for the top chamber having the wavelength”. It’s not clear how the top chamber can have a “wavelength” ? The claims in general are cumbersome and 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 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 1, 2, and 15-17, as best understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 7, 258, 464 to Morris et al. (Morris).
Regarding claims 1 and 15, Morris discloses (Fig. 2, 4, 5, and 7) a cooling system, comprising: a heat spreader (60, 112, 114) thermally coupled with a heat-generating structure (52, 72, 74); a cooling element (78) in fluid communication (with the) heat spreader [sic], the heat-generating structure being offset from the cooling element (Fig. 7); and wherein the cooling element undergoes vibrational motion (Fig. 5) when actuated to drive a fluid toward the heat spreader while not directing the fluid directly at the heat-generating structure.
Regarding claims 2 and 17, Morris discloses a support structure (88); wherein the cooling element (86) has a central region and a perimeter, the cooling element being supported by the support structure at the central region, at least a portion of the perimeter being unpinned (Fig. 5).
Regarding claim 16, Morris discloses that the frequency corresponds to a structural resonant frequency of the cooling element (86) and an acoustic resonant frequency for the cooling element (86) (col. 4, l. 67 to col. 5, l. 1).
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 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 3, 4, 8-11, 18, and 19, as best understood, are rejected under 35 U.S.C. 103 as being unpatentable over Morris alone.
Regarding claim 8, Morris discloses (Fig. 2, 4, 5, and 7) a system comprising: a heat spreader (60, 112, 114) thermally coupled with a heat-generating structure (52, 72, 74); and an active cooling system including a plurality of active cooling cells (78), each of the plurality of active cooling cells including a cooling element (86), the active cooling system being in thermal communication with the heat spreader, wherein the cooling element (86) undergoes vibrational motion (Fig. 5) when actuated to drive a fluid toward the heat spreader while not directing the fluid directly at the heat-generating structure, the heat-generating structure being offset from the active cooling system.
Regarding claims 3 and 4, Morris discloses all as applied to claim 1 above.
Regarding claims 18 and 19, Morris discloses all as applied to claim 15 above.
Regarding claims 3, 4, 8, 10, 11, 18, and 19, Morris does not explicitly disclose that a combined thickness of the heat spreader and the active cooling system not exceeding four (two, three) millimeters.
It would have been obvious to a person of the ordinary skill in the cooling arts before the effective filing date of the claimed invention to have selected any desired combined thickness for the heat spreader and the active cooling system of Morris, including as claimed, in order to achieve desired mechanical (e.g., space utilization, weight, etc.) and thermal (e.g., heat dissipation, etc.) characteristics of the apparatus, 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, 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).
Regarding claim 9, Morris discloses a support structure (88); wherein the cooling element (86) has a central region and a perimeter, the cooling element being supported by the support structure at the central region, at least a portion of the perimeter being unpinned (Fig. 5).
Claims 5-7 and 12-14, as best understood, are rejected under 35 U.S.C. 103 as being unpatentable over Morris in view of US 2005/0089415 to Cho et al. (Cho).
Regarding claims 5 and 12, Morris disclosed all as applied to claim 1 above, but does not disclose that the cooling system further comprising: a top plate having at least one vent therein, the cooling element being between the top plate and the heat spreader, forming a top chamber between the cooling element and the top plate.
Cho discloses an oscillating air pump (Fig. 1, 2, 4A) comprising: a top plate (10) having at least one vent therein (14), the cooling element (11) being between the top plate and the heat spreader (30), forming a top chamber between the cooling element and the top plate.
It would have been obvious to a person of the ordinary skill in the cooling arts before the effective filing date of the claimed invention to have modified the cooling element(s) of Morris according to the teachings of Cho, so the cooling system would comprise: a top plate having at least one vent therein, the cooling element being between the top plate and the heat spreader, forming a top chamber between the cooling element and the top plate, in order to predictably improve efficiency (the cooling element of Cho is formed as an enclosed structure formed by the housing (40), thus it would efficiently generate larger air pressure as compared to the open arrangement of the same size) and to provide thermal shielding for the cooling element (by the housing (40)), thus enhancing reliability. 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).
Regarding claims 6 and 13, Cho discloses an orifice plate (25) having at least one orifice therein (22), the orifice plate being disposed between the cooling element (11) and the heat-generating structure (30), the cooling element being actuated to drive the fluid through the at least one orifice (Fig. 4B).
Regarding claims 7 and 14, as best understood, Morris as modified by Cho discloses that the top chamber has a length (the top chamber of Cho inherently has a length, Fig. 4A), a wavelength, the wavelength being an acoustic wavelength for a frequency of the vibrational motion, the frequency of the vibrational motion corresponding to a structural resonance for the cooling element and to an acoustic resonance for the top chamber having the wavelength (Morris, col. 4, l. 67 to col. 5, l. 1).
Morris as modified by Cho does not disclose that the length is corresponding to an odd integer multiplied by a wavelength divided by four.
It would have been obvious to a person of the ordinary skill in the cooling arts before the effective filing date of the claimed invention to have selected any optimal desired length for the top chamber in the Morris-Cho combination, including as claimed, in order to achieve desired cooling capacity and efficiency, 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, it has been held that discovering an optimum value of a result (the results are desired cooling capacity and efficiency) effective variable (the variable is the length) involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Conclusion
The remaining references made of record and not relied upon are considered pertinent to
the Applicant's disclosure, because of the teachings of various oscillating and reciprocating fans
and pumps and cooling arrangements employing them. Furter, the following references teach piezo-electric blowers and pumps: US 2011/0280755, US 2013/0236338, US 11456234,
US 11532536, US 11705382, and US 11710678.
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 on 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
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