DETAILED ACTION
This is a Non-Final Office Action responsive to the instant application filed 12 August 2024, which is a broadening reissue of application 17/427,520 (US Patent 11,881,248 B2 to Okutsu et al., hereinafter “the ‘248 patent”, published 23 January 2024).
The instant application includes pending claims 1-13, of which claims 8-13 are newly presented.
Claims 1-13 are rejected herein.
Notice of Pre-AIA or AIA Status
The present application is being examined under the first inventor to file provisions of the AIA .
Reissue
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which US Patent 11,881,248 B2 is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Applicant is notified that any subsequent amendment to the specification and/or claims must comply with 37 CFR 1.173(b).
Information Disclosure Statement
The Information Disclosure Statements (IDS) submitted on 12 August 2024 and 23 August 2024 have been considered by the Examiner.
Reissue Declaration
The Reissue Declaration does not properly indicate the reasons why the patent is wholly or partially inoperative or invalid. As noted in MPEP 1414(II)(B), “Even though only one error upon which reissue is based needs to be described in the reissue oath/declaration, if PTO/SB/51 or PTO/SB/52 form is used (or PTO/AIA /05 or PTO/AIA /06, for applications filed on or after 16 September 2012), applicant needs to check the appropriate box(es) on the form identifying each of the reasons why the patent is wholly or partly inoperative or invalid. Even if a PTO form is not used, applicant needs to state each of the reasons why the patent is wholly or partly inoperative or invalid in the reissue oath/declaration.”
Specifically, the Reissue Declaration states that “Patentee believes the original patent to be wholly or partially inoperative or invalid by reason that Patentee claimed less than Patentee had the right to claim. The issued claims recite a logic chip, power supply unit, and RAM unit as a RAM module[.] The newly added claims are broadened to replace these terms with first chip, second chip, and third chip, respectively.” MPEP 1414(II)(B) states that for a reissue application “that seeks to enlarge the scope of the claims of the patent, the reissue oath or declaration must also identify a claim that the application seeks to broaden in the identification of the error that is relied upon to support the reissue application. A general statement, e.g., that all claims are broadened, is not sufficient to satisfy this requirement.” The instant Reissue Declaration amounts to a general statement that all claims are broadened, and as a result is not in compliance with MPEP 1414(B)(II). Likewise, the Reissue Declaration is defective with respect to 37 CFR 1.175(b), which requires that in a broadening reissue “the inventor’s oath or declaration…must identify a claim that the application seeks to broaden”.
Claim Rejections – 35 USC § 251
Claims 1-13 are rejected as being based upon a defective reissue declaration under 35 USC 251.
The Reissue Declaration filed with this application is defective (see 37 CFR 1.175 and MPEP § 1414) because of the following:
The Reissue Declaration fails to identify an original patent claim that the application seeks to broaden (see: MPEP 1414(II)(B) and 37 CFR 1.175(b)). For an application filed on or after 16 September 2012 that seeks to enlarge the scope of the claims of the patent, the reissue oath or declaration must also identify a claim that the application seeks to broaden. A general statement, e.g., that all claims are broadened, is not sufficient to satisfy this requirement. As noted supra, the Reissue Declaration amounts to a general statement that all claims are broadened, and as such is defective.
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 8-13 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 claim 8 recites, in part, “a first chip adjacent to one surface of the heat spreader, having a surface to the heat spreader and an exposed surface opposite to the surface” (emphasis added) and “a second chip disposed adjacent to the one surface of the heat spreader, juxtaposed with the first chip in an in-plane direction of the exposed surface of the first chip, having a surface adjacent to the heat spreader and an exposed surface opposite to the surface” (emphasis added). The bolded recitations of “the surface” may refer to a plurality of previously claimed surfaces (either the heat spreader surface or the surface adjacent to the heat spreader in the first limitation, and the heat spreader surface, first chip surface adjacent to the heat spreader, or the second chip surface adjacent to the heat spreader in the second limitation). As such it is unclear which previously claimed surface the term “the surface” refers to in these limitations, rendering the claim indefinite.
Independent claims 11-13 recite similar limitations and are rejected under similar rationale. Claims 9-10, which depend from independent claim 8, fail to cure the deficiencies of independent claim 9, and as a result are rejected under similar rationale.
Allowable Subject Matter
The instant application is a reissue of the ‘248 patent, resulting from prosecution of US Application 17/427,520. In the Notice of Allowability of US Application 17/427,520 dated 14 September 2023 the examiner referred to prior art to Karhade (US Publication 2015/0255411) and Yu (US Publication 2017/0345761), stating that Karhade and Yu were the closest prior art of record but do not teach all the limitations of independent claims 1, 4, 5, and 7. The Notice of Allowability does not particularly cite to the disclosures of Karhade and Yu in an effort to discuss distinguishing features between the claims and the prior art, but does state the following with respect to independent claim 1 (and makes similar statements with respect to independent claims 4, 5, and 7):
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See 14 September 2023 Notice of Allowability at 2.
At least newly presented independent claims 8, 11, 12, and 13 are broader than their original claim counterparts (claims 1, 4, 5, and 7, respectively) in that the previously claimed logic chip, power supply unit, and RAM unit have been replaced by the terms “first chip”, “second chip”, and “third chip”, respectively. The Examiner has found no prior art suitable to disclose at least the following limitations of claim 8:
a first chip disposed adjacent to one surface of the heat spreader, having a surface adjacent to the heat spreader and an exposed surface opposite to the surface, and including a plurality of terminals on the exposed surface;
a second chip disposed adjacent to the one surface of the heat spreader, juxtaposed with the first chip in an in-plane direction of the exposed surface of the first chip, having a surface adjacent to the heat spreader and an exposed surface opposite to the surface, the exposed surface of the second chip facing an identical direction with respect to the exposed surface of the first chip, the second chip including a plurality of terminals on the exposed surface thereof;
a third chip having an opposing surface facing the exposed surface of the first chip and the exposed surface of the second chip, and disposed across part of the plurality of terminals of the first chip and part of the plurality of terminals of the second chip;
Independent claims 11, 12, and 13 recite similar subject matter.
The combined arrangement of the first, second, and third chips was not found in the prior art. For example, Suganuma (US Publication 2011/0012255) discloses wherein a heat spreader is arranged in contact with both a CPU chip and a memory chip (see Fig. 1 and [0033]). However, Suganuma does not disclose a third chip having an opposing surface facing the exposed surface of the first chip and the exposed surface of the second chip, and disposed across part of the plurality of terminals of the first chip and part of the plurality of terminals of the second chip, as claimed.
Similarly, prior art to Strader (US Publication 2014/0368992) discloses systems and methods for “positioning a thermal interface material between a heat spreader or lid and one or more heat generating components” (see [0009]). While Strader is non-limiting with respect to a number of heat generating components that may be positioned in contact with the disclosed heat spreader (see, for example, [0031] and [0034]), Strader likewise fails to disclose the claimed arrangement of a third chip having an opposing surface facing the exposed surface of the first chip and the exposed surface of the second chip, and disposed across part of the plurality of terminals of the first chip and part of the plurality of terminals of the second chip.
As a result, the prior art fails to adequately disclose the broadened limitations of independent claims 8, 11, 12, 13, the narrower limitations of original claims 1, 4, 5, and 7, and their dependent claims.
Subsequently, claims 1-13 would be allowed were the outstanding issues noted above to be corrected.
Conclusion
Claims 1-13 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL R ROSWELL whose telephone number is (571) 272-4055. The examiner can normally be reached Monday-Friday 8:30-5:00.
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, ALEXANDER J KOSOWSKI can be reached on (571) 272-3744. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL ROSWELL/Primary Examiner, Art Unit 3992
Conferees: /JOSHUA D CAMPBELL/Primary Examiner, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992
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